International Computer Ltd.v.JRL Enterprises, Inc.

Trademark Trial and Appeal Board

Oct 16, 1998

No. 91091912 (T.T.A.B. Oct. 16, 1998)

Paper No. 34
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 16, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
International Computer Limited
v.
JRL Enterprises, Inc.
_____
Opposition No. 91,912
to application Serial No. 74/239,921
filed on January 24, 1992
_____
Thomas E. Smith of Lee, Mann, McWilliams, Sweeney & Ohlson
for International Computers Limited.
Fred W. Hathaway of Burns, Doane, Swecker & Mathis for JRL
Enterprises.
______
Before Simms, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
JRL Enterprises, Inc. has filed an application to
register the mark ICL for “training system comprised of
computer hardware and software for use as an educational
Opposition No. 91912
2
classroom aid and independent, self-testing and learning
tool for students.”1
International Computers Limited has filed an opposition
to registration of the mark under Section 2(d) of the
Trademark Act, 15 USC § 1052(d), on the ground of likelihood
of confusion. Opposer alleges that applicant’s goods are
identical to the goods and services with which opposer uses
the identical mark ICL. Opposer asserts ownership of
registrations for the mark ICL2 for use in connection with:
Computer hardware, i.e., series processors, terminals,
and disc storage units in Class 9; and
Computer programs recorded on machine-readable tapes,
cards, or discs; publications containing specifications
or descriptions of computer programs; and forms with
visually readable program information recorded thereon
in Class 16.3
Computer engineering services in Class 42.
Computer programming services in Class 35.
Training personnel of users of computers in the
operation and/or programming of computers in Class 41.4
Applicant, in its answer, as amended, has denied the
salient allegations of the notice of opposition and has set
forth a counterclaim to cancel opposer’s pleaded
Registration No. 941,672 in whole or in part, on the basis

1 Ser. No. 74/239,921, filed Jan. 24, 1992, based on a bona fide
intent to use.
2 While opposer alleged ownership of three additional
registrations in the notice of opposition, these registrations
have since been cancelled under Section 8, as admitted by
opposer, and need not be considered.
3 Reg. No. 967,021, issued Aug. 28, 1973; renewed Aug. 28, 1993.
4 Reg. No. 941,672, issued Aug. 22, 1972; renewed Aug. 22, 1992.
Opposition No. 91912
3
of abandonment or nonuse,5 and to cancel opposer’s pleaded
Registration No. 967,021 in part, on the basis of nonuse.
In its counterclaim, applicant asserts that, although it
maintains its denial of the likelihood of confusion, by
cancellation or restriction of the goods and services in the
pleaded registrations to the fields of actual use, the
likelihood of confusion would be even further avoided.
The record consists of the files of the involved
application and the two pleaded registrations; trial
testimony taken by opposer with related exhibits; trial
testimony taken by applicant; and certain responses of
opposer to applicant’s discovery requests and requests for
admission, as well as documents produced by opposer and
authenticated by means of requests for admission, all made
of record by applicant’s notice of reliance. Both parties
filed briefs on the case, but no oral hearing was requested.
In the testimony of Jack O’Keefe, associate general
counsel for ICL, Inc., a wholly-owned subsidiary of opposer,
he describes the computer products and related software sold
by opposer in the United States primarily for use in point-
of-sale systems by retail and grocery store operations and
for office automation by law firms and other large

5 While applicant sets forth the grounds for cancellation in its
pleadings as abandonment or nonuse, the actual basis alleged by
applicant is that the services identified in this registration
are intended primarily in support of opposer’s goods and thus are
not properly the subject of registration.
Opposition No. 91912
4
businesses. Mr. O’Keefe further outlines the services
provided to its customers including computer engineering
services, such as systems integration, computer programming
to develop a custom software package for a specific
customer’s needs, and training in the use not only of
opposer’s hardware and software but also third-party
hardware and software of the customer which may be
integrated into the system. By means of exhibits introduced
during his testimony, Mr. O’Keefe demonstrates the nature of
the training systems developed by opposer to instruct
customer personnel in a hands-on environment replicating the
customer’s particular system, which include training
materials containing self-tests and exercises to allow the
students to test their training at various stages.
Applicant introduced the testimony of its president,
John R. Lee, to describe the nature of the educational
software systems with which it presently uses the mark “I
Can Learn” and with which it intends to use the mark ICL.
Mr. Lee states that applicant’s training system is used in
the educational field, mostly in middle and high schools, to
instruct students, particularly, slower students, in
subjects such as algebra and English. The complete system
includes computer hardware which is obtained from third-
party vendors, a video decompression board, and software,
the latter two being installed by applicant. An entire
Opposition No. 91912
5
classroom is equipped with the computer systems, but the
software is geared to go at the pace of each individual
child, and is capable of defaulting to the learning style
which best suits that child. Mr. Lee testifies that the
software has been highly successful since being tested in
Louisiana in the ‘94-‘95 school year and is being expanded
to cover not only other curriculum but also apprenticeship
programs in various trades. The products are presently
purchased by school administrators, but Mr. Lee stated that
there was the possibility that companies such as Blockbuster
Videos might purchase the educational software for rental
purposes.
Before considering the issue of likelihood of
confusion, we direct our attention to applicant’s
counterclaim for cancellation in whole of opposer’s
Registration No. 941,672. Applicant contends that all of
the services listed in this registration are services which
are necessary to the sale of opposer’s goods and thus are
not subject to an independent service mark registration.
Applicant relies, for a large part, upon the response given
by opposer during discovery that its services “are intended
primarily in support of opposer’s equipment and software
products.” (Interrogatory No. 4).
In response, opposer argues that since the registration
is over five years old, the only potential ground for
Opposition No. 91912
6
cancellation would be abandonment, which applicant has
failed to allege, much less prove. Opposer argues that
applicant’s allegation that opposer’s services are only
ancillary to the sale of its computers and computer programs
is not only not a ground for cancellation under Section 14
of the Trademark Act, but also is contradicted by opposer’s
evidence of the separate value of these services to opposer
and the separate payment by customers for the same.
The only potential grounds for cancellation of a
registration over five years old are specifically listed in
Section 14(c) of the Trademark Act. While abandonment is
one such ground, the qualification of a business activity as
a separately registrable service is not. Furthermore,
although applicant initially set forth its counterclaim in
terms of nonuse or abandonment, the basis upon which
applicant is actually seeking to cancel opposer’s
registration is strictly limited to evidence which applicant
contends shows that opposer’s services are mandatory to the
sale of its goods.
As such, applicant’s counterclaim for total
cancellation is fatally defective, being based on a ground
not available under Section 14(c), and is dismissed with
prejudice.6

6 As an aside, in In re Otis Engineering Corp., 217 USPQ 278, 280
(TTAB 1982) the Board stated that the fact that the services in
question are limited to the party’s own equipment is not
Opposition No. 91912
7
Accordingly, opposer’s ownership of valid and
subsisting registrations for its pleaded mark is no longer
at issue, and the registrations may be relied upon for
purposes of establishing priority. King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
In applicant’s counterclaim for partial cancellation,
or restriction, under Section 18 of the Trademark Act, of
each of opposer’s pleaded registrations, applicant seeks to
limit the goods and services as follows (proposed
restrictions underlined):
Computer hardware, i.e., series processors, terminals,
and disc storage units; all for use in the fields of
office automation and retailing.
Computer programs pertaining to retailing, desktop
publishing, word processing, spreadsheets, and office
networking recorded on machine-readable tapes, cards,
or discs sold as a unit with publications containing
specifications or descriptions of computer programs;
and forms with visually readable program information
recorded thereon; all for use in the fields of office
automation and retailing.
Computer engineering services in the fields of office
automation and retailing.
Computer programming services in the fields of office
automation and retailing.
Training personnel of users of computers in the
operation and/or programming of computers with software

determinative of registrability, so long as bona fide non-
mandatory customer services are provided in connection with the
sale of the goods. In the absence of evidence to the contrary,
we see no reason to view opposer’s services as other than non-
mandatory services provided as an accommodation or extra value to
its customers.
Opposition No. 91912
8
pertaining to retailing, desktop publishing, word
processing, spreadsheets, and/or office networking; all
in the fields of office automation and retailing.
Applicant maintains that such restrictions would
reflect opposer’s actual fields of use of its mark and would
eliminate any likelihood of confusion as a result of the
concurrent use of the parties’ marks. Opposer, on the other
hand, argues that these restrictions would “emasculate” its
registrations and, even then, would not eliminate the
likelihood of confusion between opposer’s use of its house
mark ICL for its goods and services and applicant’s use of
ICL for its training system.
As set forth in Eurostar Inc. v. “Euro-Star” Reitmoden
GmbH & Co. KG, 34 USPQ2d 1266, 1272 (TTAB 1994), the Board
will only exercise its authority under Section 18 of the
Trademark Act if the person seeking restriction of a
registration alleges and proves that the likelihood of
confusion will be avoided if the registration is so
restricted. While the party seeking the restriction need
not plead and prove a specific ground for cancellation, the
Board will only invoke its authority under Section 18 if the
proofs show that the restriction is equitable and
appropriate.
Thus, we look first to the factors which must be
considered in determining the likelihood of confusion and
the evidence of record as it relates thereto. See In re
Opposition No. 91912
9
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973).
Insofar as the similarity of the marks of the parties
is concerned, no distinction can be made. They are
identical. We do not agree with applicant that the
connotations of the mark ICL are different when used by the
two parties. Since registration is sought for ICL alone,
without any additional wording which might lead consumers to
associate ICL with “I Can Learn,” rather than International
Computers, Limited, there is no basis for assuming that such
a connotation will be obvious to potential purchasers of
applicant’s training system.
The second factor to be taken under consideration is
the similarity or dissimilarity of the goods and services
involved. As a general principle, the greater the degree of
similarity of the marks, the lesser is the degree of
similarity required of the goods and services on which they
are being used to support a holding of likelihood of
confusion. See In re Concordia International Forwarding
Corp., 222 USPQ 355 (TTAB 1983) and the cases cited therein.
Moreover, it is well established that in making this
comparison we must view applicant’s goods as set forth in
the identification of goods, and in the absence of any
limitations, take under consideration all the normal
channels of trade and reasonable end products for these
Opposition No. 91912
10
goods. See CBS Inc, v. Morrow, 708 F.2d 1579, 218 USPQ 198
(Fed. Cir. 1983). In addition, an application with an
identification of goods having no restrictions on trade
channels cannot be limited on the basis of evidence
presented at trial as to actual channels of trade or type of
purchasers. See Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990).
Opposer argues that there is nothing in the
identification of applicant’s goods which limits either
applicant’s computer hardware or its software. Instead,
according to opposer, the only limitation is as to the end
use of the hardware and software, i.e., “for use as an
educational classroom aid and independent self-testing and
learning tool for students”, the same purpose for which
opposer’s computers and software are used in opposer’s
training programs.
Applicant, on the other hand, contends that if
opposer’s registrations were restricted to the actual fields
of use or channels of trade, any likelihood of confusion
between the goods and services of the parties would be
eliminated. In the alternative, applicant argues that, even
without such limitations, it is inherent in applicant’s
identification of goods that its goods are instructional
products purchased by school systems, in contrast to
Opposition No. 91912
11
opposer’s business products which have been shown to be for
use in the fields of office automation and retailing.
Applicant further argues that the training provided by
opposer is brief and only with respect to the operation of
computers.
The problem with applicant’s analysis is that the
identification of goods in its application is not specific
as to the type of training that is being provided to the
students by means of the “classroom aid” or “learning tool”
which consists of “hardware and software.” We cannot
distinguish between opposer’s training of personnel
(“students”) in the operation and/or programming of
computers (which requires both computer hardware and
software) and applicant’s training system. Moreover, even
if opposer’s goods and services were restricted in the
manner sought by applicant in its counterclaim, this does
not eliminate the fact that applicant’s training system, as
presently identified, would encompass training for these
limited purposes. Although Mr. Lee stated that using
applicant’s software for teaching a subject such as word
processing would be “like using the NASA Space Program to
fly a kite” (Lee at 55), there is no limitation in the
Opposition No. 91912
12
identification of applicant’s goods which would preclude use
of its software for this purpose.7
Looking to the channels of trade, we find the same
deficiency in applicant’s identification of its goods.
Regardless of the testimony of Mr. Lee as to the actual
purchasers of applicant’s training system, there is no
restriction of the channels of trade for applicant’s goods
to other than the normal channels of trade for a training
system, which would clearly not be limited to school
systems. In fact, applicant itself has introduced testimony
to the effect that its sales might be expanded to stores
such as Blockbuster Videos, a commercial enterprise.
Moreover, applicant has acknowledged that, even within the
school system channel of trade, competitive educational
software products are being sold by companies such as IBM
and Apple, which also sell computers similar to opposer’s.
Thus, no distinction can be made between the goods and
services of the parties on the basis of channels of trade.
Even if opposer’s registrations were restricted to the

7 Although applicant, in its reply brief, proffers the addition
of the phrase “for use in the field of education” to its
identification, this potential restriction has not been tried by
the parties and thus will be given no consideration. See
Eurostar, supra, at 1272. Furthermore, it would appear that any
type of training might be encompassed by the word “education.”
Opposition No. 91912
13
channels of trade specifically described in its testimony,
the potential for overlap remains, in the absence of
specific limitations of applicant’s training systems in
terms of subject matter and areas of use.
Of the remaining relevant duPont factors, we find no
factor which weighs in applicant’s favor. Insofar as
purchasers are concerned, there is no limitation in
applicant’s identification of goods which would rule out the
ordinary purchaser of computer hardware and software. Even
if its goods were restricted to costly systems purchased by
sophisticated buyers, this would not ensure against the
likelihood of confusion. The potential still exists for the
same purchasers to come into contact with the computer
products of both parties, all bearing the mark ICL.
Moreover, applicant has made no evidence of record of third-
party use of similar marks for similar goods which might
lead to a more discriminating scrutiny on the part of these
purchasers.
Accordingly, we find that use by applicant of the mark
ICL for the goods recited in its application will result in
the likelihood of confusion with opposer’s use of the
identical mark for its computer products and services.
Furthermore, the Board will not exercise its authority to
restrict opposer’s registrations under Section 18 of the

Opposition No. 91912
14
Trademark Act, since applicant has failed to prove that the
likelihood of confusion would be avoided by these
restrictions.
Decision: Applicant’s counterclaim for cancellation of
opposer’s pleaded registrations in whole or in part is
dismissed with prejudice. The opposition is sustained and
registration is refused to applicant.
R. L. Simms
C. E. Walters
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board