Lincoln Global, Inc.

Trademark Trial and Appeal Board

Jan 13, 2022

87896781 (T.T.A.B. Jan. 13, 2022)

Hearing: December 14, 2021 Mailed: January 13, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ---- In re Lincoln Global, Inc. _____ Serial No. 87896781 _____ Thomas M. Williams of Barack Ferrazzano Kirschbaum & Nagelberg for Lincoln Global, Inc. Collier L. Johnson II, Trademark Examining Attorney, Law Office 123, Susan Hayash, Managing Attorney. _____ Before Shaw, Adlin and Dunn, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Applicant Lincoln Global, Inc. seeks registration of PYTHONXOS, in standard characters, for “software for controlling the operation of a robotic or automated welding or plasma cutting machine system” in International Class 9.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act, on the ground that Applicant’s mark so resembles the registered mark PYTHON, in typed form, for “electric arc welding torches and parts therefor” in International Class 9,2 that it is 1 Application Serial No. 87896781, filed April 27, 2018 under Section 1(b) of the Trademark Act based on an alleged bona fide intent to use the mark in commerce. 2 Registration No. 2632578, issued October 8, 2002; renewed. This Opinion is Not a Precedent of the TTAB Serial No. 87896781 2 likely to cause confusion. After the refusal became final, Applicant appealed and filed a request for reconsideration which was denied. The appeal is fully briefed, and Applicant and the Examining Attorney appeared at an oral hearing on December 14, 2001. I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) (setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor about which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A. The Marks The marks are obviously highly similar “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). In fact, Applicant’s mark, which Serial No. 87896781 3 is used for computer software, is nothing more than Registrant’s mark with XOS added at the end. This distinction does not make a meaningful difference. More specifically, PYTHON, the entirety of Registrant’s mark, is identical to the dominant portion of Applicant’s mark. The word PYTHON is dominant in Applicant’s mark because it comes first. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (“The identity of the marks’ initial two words is particularly significant because consumers typically notice those words first.”); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). It is also the dominant part of Applicant’s mark because, as Applicant concedes, “OS,” the last two letters of Applicant’s mark, “refers to ‘operating system.’” 7 TTABVUE 8.3 In other words, the “OS” in Applicant’s mark is generic, or at best descriptive, of Applicant’s software goods.4 Thus, “OS” is entitled to less weight in our analysis. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. 3 Citations to the appeal record are to TTABVUE, the Board’s online docketing system. The number preceding TTABVUE corresponds to the docket entry number, and any numbers following TTABVUE refer to the page(s) of the docket entry where the cited materials appear. Citations to the application file are to USPTO’s Trademark Status & Document Retrieval (“TSDR”) online database, by page number, in the downloadable .pdf format. 4 We take judicial notice that an “operating system” is “software that controls the operation of a computer and directs the processing of programs.” merriam- webster.com/dictionary/operating%20system. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). Serial No. 87896781 4 Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)). Notwithstanding Applicant’s arguments to the contrary, there is “nothing improper” in assigning less weight to the “OS” in Applicant’s mark, and doing so is not a “dissection” of Applicant’s mark. Rather, this type of analysis is “unavoidable” and perfectly appropriate. In re Nat’l Data, 224 USPQ at 751. We of course have not ignored the “X” that precedes the “OS” at the end of Applicant’s mark, but because the dominant, first portion of Applicant’s mark is identical to Registrant’s mark PYTHON, Applicant’s mark PYTHONXOS looks and sounds quite similar to Registrant’s mark. The marks also convey similar meanings and commercial impressions, as they both associate the goods with a python, a type of “large constricting snake.” April 12, 2021 Office Action TSDR 5.5 In comparing the marks, we have also kept in mind, as we must, that “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). Thus, in considering whether consumers are likely to remember the relatively small differences between the marks, we have 5 merriam-webster.com/dictionary/python. Serial No. 87896781 5 taken into account: (1) “the fallibility of memory over a period of time;” and (2) that the “average” purchaser “normally retains a general rather than a specific impression of trademarks.” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (“marks must be considered in light of the fallibility of memory”) (citation, internal quotation marks, and ellipsis omitted); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d, 972 F.2d 1353 (Fed. Cir. 1992) (“The proper emphasis is thus on the recollection of the average customer, who normally retains a general rather than a specific impression of trademarks or service marks.”). Finally, consumers familiar with Registrant’s mark could perceive Applicant’s mark as a version thereof, perhaps a version used to identify software or an operating system for welding tasks. In short, this factor weighs in favor of finding a likelihood of confusion. B. The Goods, Channels of Trade and Classes of Consumers The goods need not be identical or even competitive in order to find a likelihood of confusion. Rather, the question is whether the goods are marketed in a manner that “could give rise to the mistaken belief that they emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.”); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in Serial No. 87896781 6 question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods”); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1109 (2007). Here, the Examining Attorney has established that goods such as those identified in the cited registration (electric arc welding torches) and goods such as those identified in the involved application (software for controlling an automated welding or plasma cutting system) are offered under the same marks, and travel in the same channels of trade to the same consumers. For example, KEMPPI uses its mark and trade name in connection with both “automated” and “robotic” welding equipment and “welding management software”: August 24, 2018 Office Action TSDR 10 (emphasis added). “Kemppi is a company dedicated to welding excellence. Our offering includes welding solutions - intelligent equipment, welding management software ….” Id. See also May 26, 2021 Denial of Request for Reconsideration TSDR 42-45. Similarly, SKS Welding Systems uses its mark and trade name in connection with “weld packages,” “weld machines” and welding-related “software/IT.” August 24, 2018 Serial No. 87896781 7 Office Action TSDR 9; April 12, 2021 Office Action TSDR 6-7. The company’s “welding torch series” is “for all industrial robots.” Id. See also April 12, 2021 Office Action TSDR 8-9; May 26, 2021 Denial of Request for Reconsideration TSDR 36-41. Another welding-focused company offers both welding torches and welding software under its “ewm” mark: April 12, 2021 Office Action TSDR 10-12. See also May 26, 2021 Denial of Request for Reconsideration TSDR 46-48. Sumig, “The Robotic Welding Specialists,” offers robotic welding torches bearing the SUMIG mark, as well as “offline robotic programming software” used therefor or therewith: Serial No. 87896781 8 Id. at 13, 14. Similarly, Miller Welds uses the MILLER mark and name for both welding software and welding torches: Serial No. 87896781 9 Id. at 15-16. This third-party use evidence establishes a relationship between the goods. See In re Detroit Athletic, 128 USPQ2d at 1050 (crediting relatedness evidence showing that Serial No. 87896781 10 third parties use the same mark for the goods and services at issue because “[t]his evidence suggests that consumers are accustomed to seeing a single mark associated with a source that sells both”); Hewlett-Packard Co., 62 USPQ2d at 1004 (evidence that “a single company sells the goods and services of both parties, if presented, is relevant to a relatedness analysis”). In addition, the Examining Attorney introduced a number of use-based third- party registrations showing that the same marks are registered in connection with the types of goods Registrant offers (or similar goods) on the one hand, and the types of goods Applicant offers (or similar goods) on the other. These include: (Reg. No. 3214820) is registered for “electric arc welding machines”6 and “welding data collection devices, namely, devices consisting of software only or software and hardware that measure welding parameters such as voltage, amperage, linear or circumferential progress of the weld and other functions and record them for future use or transmit them to a remote recipient.” ADAPTARC (Reg. No. 3926943) is registered for “electric arc welding machines,” “electric arc welders” and “welding software, software for enabling welding machines and welding torches, computer software to control and monitor welding machines, computer software to control and monitor welding torches ….” FRONIUS (Reg. No. 4291398) is registered for “electric arc welders” and “software for use in operating welding machines.” ABICOR BINZEL (Reg. No. 5281718) is registered for “installations, machines, apparatus and equipment for welding and cutting, in particular electric arc welding 6 “Electric arc welding machines” is broad enough to encompass electric arc welding torches. Serial No. 87896781 11 machines …” and “computer software and programs therefor to aid in the programming of electric arc welding and cutting robots.” QIROX (Reg. No. 5341428) is registered for “electric welding machines” and “computer software for database management and for the control of automatic welding machines, welding current sources and industrial robots.” QINEO (Reg. No. 5346945) is registered for “electric arc welding machines” and “computer software for database management and for the control of automatic welding machines, welding current sources and industrial robots.” (Reg. No. 5768012) is registered for “electric arc welding machines” and “weld process control hardware and downloadable software.” KAISU (Reg. No. 6087097) is registered for “welding torches,” “electric welding machines” and “downloadable computer software used to program and operate robots.”7 May 26, 2021 Denial of Request for Reconsideration TSDR 6-35. “Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998). This evidence supports and bolsters the third-party use evidence. 7 “Software used to program and operate robots” is broad enough to encompass software used to program and operate robots involved in welding. Serial No. 87896781 12 The third-party use evidence also establishes that the channels of trade and classes of consumers overlap, because sources of welding products, including electric arc welding torches, also offer software to control the torches or other welding machinery.8 Therefore, the goods are related and their channels of trade and classes of consumers overlap. These factors also weigh in favor of finding a likelihood of confusion. C. Purchaser Sophistication and Care Applicant’s claim that the relevant consumers are sophisticated and will exercise care in purchasing, 7 TTABVUE 14-15, is unsupported by any evidence; it is nothing more than attorney argument. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 8 Applicant’s recitation of the real-world differences between Applicant’s and Registrant’s goods is not persuasive. While Applicant’s software is apparently sold for use in connection with Applicant’s “industrial-size, fully automated, computer-operated plasma cutting or welding machine that sells for $700,000 or more,” 7 TTABVUE 13, none of these specifications are included in Applicant’s identification of goods. Applicant’s identified goods are identified more generally: “software for controlling the operation of a robotic or automated welding or plasma cutting machine system.” This identification is broad enough to encompass any type of software for operating robotic or automated welding systems, including software used in connection with welding torches. We are bound by Applicant’s and Registrant’s identifications and cannot limit the goods, channels of trade or classes of customers to what Applicant’s evidence shows them to be. In re Bercut-Vandervoort & Co., 229 USPQ 763, 764- 65 (TTAB 1986) (“It is well settled that in a proceeding such as this, the question of likelihood of confusion must be determined by an analysis of the marks as applied to the goods identified in the application vis-à-vis the goods recited in the registration, rather than what extrinsic evidence shows those goods to be.”); see also Tuxedo Monopoly Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) and In re Thor Tech Inc., 90 USPQ2d 1634, 1637-38 (TTAB 2009) (“we must also analyze the similarity or dissimilarity and nature of the goods based on the description of the goods set forth in the application and the registration at issue … we may not limit or restrict the [goods] listed in the cited registration based on extrinsic evidence”). Serial No. 87896781 13 USPQ2d 1797, 1799 (Fed. Cir. 2018) (“Attorney argument is no substitute for evidence.”) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)); see also In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2006 (TTAB 2014) (finding that there was no proof to support the statements in the record by counsel). Perhaps more importantly, Applicant’s claim that purchases of its software involve “intense planning, sophisticated negotiation through skillfully drafted contracts, complex financing and participation of the customer’s top executive team including technical, financial, managerial and legal experts,” 7 TTABVUE 15, is not reflected in Applicant’s identification of goods. We must base our decision on the “least sophisticated potential purchasers” for the goods as identified, which could encompass more basic, less expensive software to control welding or plasma cutting machine systems. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162-63 (Fed. Cir. 2014). Furthermore, there is no reason to assume that consumers of Registrant’s electric arc welding torches, which Applicant admits are “generally manufactured in bulk like any other item of general consumption,” 7 TTABVUE 14, would be particularly sophisticated or careful. In any event, even if we assume that at least Applicant’s customers will make their purchasing decisions carefully, and that this factor weighs in Applicant’s favor, it is outweighed by the close similarity of the marks, as well as the relationship between the goods and their overlapping channels of trade and classes of consumers. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986); Serial No. 87896781 14 Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); see also, HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweighed sophisticated purchasers, careful purchasing decision, and expensive goods). D. Lack of Actual Confusion Applicant argues, again without supporting evidence, that “Applicant and Registrant have coexisted for many years under PYTHON-formative trademarks in the welding and cutting industry,” 7 TTABVUE 16, and that this weighs against finding a likelihood of confusion. The problem with this argument is that we are not concerned with “the welding and cutting industry” generally. We are concerned with Applicant’s “software for controlling the operation of a robotic or automated welding or plasma cutting machine system” specifically. Applicant seeks registration of PYTHONXOS for these goods based on an intent to use, not actual use. Thus, in the absence of evidence regarding whether and to what extent Applicant has used its mark for the identified software goods, Applicant’s attorney’s unsupported argument is unpersuasive. In fact, we cannot gauge whether or the extent to which there has been a meaningful opportunity for confusion regarding the identified software goods to occur. See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of any showing of actual confusion is of very little, if any, probative value here because (1) no evidence was presented as to the extent of ETF’s use of the VITTORIO RICCI mark on the Serial No. 87896781 15 merchandise in question in prior years ….”); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). This factor is neutral. E. The Thirteenth DuPont Factor/Strategic Partners The Examining Attorney acknowledged and did not object to Applicant’s claim that it “has a prior registration, U.S. Registration No. 4058524, PYTHONX for ‘Computer numerically controlled (CNC) Plasma Cutting Machines’ … which has co- existed with the registrant’s mark with no instances of actual confusion.” May 26, 2021 Denial of Request for Reconsideration TSDR 3. Applicant argues that this mark “is not materially different from the mark at issue in this appeal, PYTHONXOS,” and that this prior registration’s coexistence with Registrant’s cited registration entitles Applicant to registration of its involved PYTHONXOS mark under In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). We are not persuaded. In Strategic Partners, the USPTO refused registration of the mark for footwear based on a registration of the mark for clothing items. On appeal, the applicant pointed out that it owned a prior registration of ANYWEARS (typed form),9 also for footwear, and that this registration coexisted with the cited registration for over five years. The applicant argued that because its 9 The difference between the Strategic Partners applicant’s there-involved mark (in stylized form) and previously registered mark (in typed form) was immaterial. In fact, the stylized form of a mark is legally identical to the same mark in typed/standard character form. In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (“Symbolic does not, and cannot, dispute that the mark, I AM in standard character form, and the registrants’ marks, I AM in standard character, typed, or stylized form, are pronounced the same way and, at a minimum, legally identical.” Serial No. 87896781 16 prior registration was not confusingly similar to the cited mark, the virtually identical mark in its involved application was not either. The Board agreed, pointing out that it “would conclude, under usual circumstances, that confusion is likely,” In re Strategic Partners, 102 USPQ2d at 1398, but that the “unusual situation” presented by the prior registration was relevant under the thirteenth DuPont factor. Ultimately, because there was “no meaningful difference” between the mark in the prior registration and the there- involved mark, the goods in the prior registration and there-involved application were in-part identical, and the cited registration was more than five years old and “not subject to attack … on a claim of priority and likelihood of confusion,” the thirteenth DuPont factor “tip[ped] the scale in favor of applicant and a finding of no likelihood of confusion.” Id. at 1399. The situation here is different than in Strategic Partners. Here, there is a meaningful difference between Applicant’s involved mark PYTHONXOS and the mark in its prior registration PYTHONX. Indeed, as explained in Strategic Partners, the difference between the singular and plural forms of ANYWEAR was “not meaningful,” a finding consistent with case law from the Court of Customs and Patent Appeals. Id. (citing Wilson v. Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957)). Here, by contrast, there is a meaningful difference between PYTHONX and PYTHONXOS, which are not merely singular vs. plural versions of the same term. Rather, the “OS” in Applicant’s involved mark changes not only its appearance and sound, but also, because it means “operating system,” its meaning and commercial Serial No. 87896781 17 impression. Specifically, PYTHONX conveys a python, while PYTHONXOS conveys an operating system called “python.” The situation here is also different than Strategic Partners because the goods are even more different than the marks. Obviously, there is a “meaningful difference” between the “plasma cutting machines” identified in Applicant’s prior registration and the “software” identified in the involved application. The mere relationship between these goods does not present an “unusual situation,” nor is not enough to invoke Strategic Partners.10 This factor is also neutral. II. Conclusion The marks are highly similar, the goods are related, and the channels of trade and classes of consumers overlap. These factors outweigh any assumed consumer sophistication or care in purchasing. Confusion is likely. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed. 10 Applicant relies not just on Strategic Partners, but also on a non-precedential and thus non-binding decision, In re Hana Fin. Grp. Inc., Application Serial No. 86019890. Even if Hana Financial was binding it would not change the result here. There the differences between the marks in the application and prior registration were solely in company designations, i.e., HANA BANK vs. HANA BANCORP, differences which did not impact the marks’ meanings or commercial impressions. More importantly, there the services were in- part “identical.” Here they are not.