Logicom, Inc.

Trademark Trial and Appeal Board

May 16, 2003

No. 75886535 (T.T.A.B. May. 16, 2003)

Paper No. 16
RFC
Mailed: 5/16/03
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Logicom, Inc.
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Serial No. 75/886,535
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John J. Lynch for Logicom, Inc.
Khanh Le, Trademark Examining Attorney, Law Office 104
(Michael Hamilton, Managing Attorney).
_______
Before Cissel, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On January 4, 2000, applicant, a New York state
corporation, filed the above-referenced application to
register the mark “LOGICOM” on the Principal Register for
“design and development of computer software, programs,
systems and networks for others, and computer consultancy
and support services in International Class 42.” Applicant
claimed first use of the mark in connection with the
services and first use of the mark in interstate commerce
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/886,535
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in connection with the services at least as early as June
of 1985.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that applicant’s mark, when used in
connection with the services specified in the application,
so resembles the mark “LOGICON,” which is registered1 for
“analysis, planning, engineering, integration, testing and
simulation for information, weapons, command, control,
communications and intelligence systems; computer software
design for others; updating of computer software; computer
system design, integration and consulting services; life
cycle engineering; design engineering; engineering
consulting services, namely, operations and systems
logistics and planning in the nature of determining risks
and contingencies and their appropriate responses and
outcomes; research services in high energy lasers, advanced
imaging technology, nuclear and conventional weapons
effects and anti-proliferation strategies, ocean physics,
neural networks and human factors engineering,” in Class
42, that confusion is likely. The Examining Attorney
1 Reg. No. 2,244,159, issued on May 11, 1999 to Logicon, Inc., a
Delaware corporation.
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concluded that confusion is likely because the marks are
highly similar and the services are closely related.
Additionally, the Examining Attorney required applicant to
amend the recitation of services to clarify the indefinite
term “support services,” and suggested an amended
recitation for applicant to adopt, if it is accurate.
Applicant responded by amending the application to
adopt the recitation of services suggested by the Examining
Attorney: “design and development of computer software,
programs, systems and networks for others, and computer
consultancy and technical support services, in
International Class 42.” Applicant also argued that the
refusal to register under Section 2(d) of the Act was
improper because the actual services rendered by the owner
of the registered mark and by applicant under their
respective marks are different and are provided to
different classes of sophisticated purchasers. Although
applicant quoted from registrant’s website in support of
this contention, no evidence was submitted in support of
it.
Although the amended recitation of services provided
by applicant had adopted in its entirety the terminology
suggested by the Examining Attorney in the first Office
Action, apparently upon reconsideration, the Examining
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Attorney required further amendment to the recitation-of-
services clause, holding that the wording “technical
support services” is unacceptably indefinite.
Additionally, the refusal to register under Section
2(d) of the Act was also maintained. In support of the
refusal, the Examining Attorney attached copies of pages
from the website of the registrant wherein registrant
explained the nature of the services it offers. The
Examining Attorney asserted that this evidence establishes
that the registrant performs the same services as the
applicant does and offers the services to both government
agencies and commercial consumers.
Applicant responded by amending the recitation of
services to the following: “design and development of
computer software, programs, systems and networks for
others and computer consultation; technical support
services, namely, troubleshooting of computer hardware and
software problems via telephone, e-mail and in person, in
International Class 42.” Applicant again maintained that
confusion is not likely in the case at hand “in light of
the significant differences between the respective services
and channels of trade as they relate to Applicant’s mark
and that of Prior Registrant.” Applicant argued that
“(w)hile both entities engage in computer system design,
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the actual services they provide differ significantly.
Prior Registrant’s computer consulting and development
services are performed in the context of vastly different
systems, including those relating to nuclear and
conventional weapons and intelligent systems, anti-
proliferation strategies, high-energy lasers, advanced
imaging technology, ocean physics, neural network sand
human factoring engineering,” whereas “[b]y contrast,
Applicant’s services are focused on developing customized
applications primarily for companies in the New York
financial community and other comparable entities such as
law firms. As such, these contrasting services define
sharply different markets for, and consumers of, Prior
Registrant’s and Applicant’s respective services.”
Additionally, applicant asserted that it was not aware of
any actual confusion caused by the use of these two marks
in connection with the respective services of registrant
and applicant.
In the third Office Action, the Examining Attorney
accepted the amended recitation of services, but maintained
and made final the refusal to register under Section 2(d)
of the Act. Restating the basis for the conclusion that
applicant’s mark and the registered mark are highly similar
in appearance, sound, connotation and commercial
Ser No. 75/886,535
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impression, the Examining Attorney went on to explain that
the issue of whether the services are closely related is
determined on the basis of how the services are identified
in the application and in the registration, respectively,
rather than on the basis of extrinsic evidence that
establishes what the services actually are that the
applicant and the registrant render under their respective
marks. Submitted in support of the refusal was a copy of a
page from a dictionary showing that neither “logicon” nor
“logicom” are listed therein. The Examining Attorney
argued that this evidence supports the conclusion that the
marks are similar. His argument seems to be that if the
words had meanings and the meanings were different, then
the marks might create different commercial impressions,
but that because they have no meanings and the terms are
similar in pronunciation and appearance, the marks are very
much alike.
Applicant timely filed a Notice of Appeal, followed by
its appeal brief. The Examining Attorney filed a
responsive brief, but applicant did not request an oral
hearing before the Board.
Based on careful consideration of the record in this
application, in view of the arguments of applicant and the
Examining Attorney, as well as the relevant legal
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precedents, we hold that the refusal to register must be
affirmed because confusion is likely between applicant’s
mark, as used in connection with the services set forth in
the amended application, and the cited registered mark, in
connection with the services recited in the registration.
The test for determining whether confusion is likely
is well settled. First, we must evaluate the marks
themselves for similarities in appearance, sound,
connotation and commercial impression. In re E.I. duPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Then, we must compare the services to determine if they are
related or if the activities surrounding their marketing
are such that confusion as to source is likely. In re
International Telephone and Telegraph Corp., 197 USPQ 910
(TTAB 1978). Regarding the marks, the test for confusion
is not whether the marks can be distinguished when
subjected to a side-by-side comparison. As the Examining
Attorney points out, the issue is whether the marks create
the same overall commercial impression. Visual Information
Institute, Inc. v. Vicon Industries, Inc., 209 USPQ 179
(TTAB 1980). The emphasis is on the recollection of the
average purchaser, who normally retains a general, rather
than specific, impression of trademarks. Chemetron Corp.
v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979).
Ser No. 75/886,535
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When the services of the respective parties are closely
related, the degree of similarity between the marks which
is required to support a finding of likelihood of confusion
is not as great as it would be if the services were not
closely related. ECI Division of E Systems, Inc. v.
Environmental Communications Inc., 207 USPQ 443 (TTAB
1980).
The marks in the instant case are similar in
appearance, pronunciation and commercial impression.
“LOGICOM” and “LOGICON” each begin with the term “logic,”
which is suggestive in connection with computer goods and
services, and when the “COM” and “CON” endings are combined
with this suggestive term, the resulting marks are quite
similar. Especially considering that they will not
necessarily be compared on a side-by-side basis by people
with infallible memories, their use on the same or closely
related goods or services is likely to cause confusion.
A significant legal principle in this case is that our
determination of whether the services of applicant and
registrant are so closely related that confusion is likely
must be made based upon the specific ways that the services
are identified in the application and the cited
registration, respectively, without limitations or
restrictions that are not reflected therein. Octocom
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Systems, Inc. v. Houston Computers Services, 918 F.2d 937,
16 USPQ2d 1783 (Fed. Cir. 1990). Notwithstanding all the
argument applicant makes regarding what it perceives as
differences between the services applicant actually
provides under its mark and the services applicant believes
registrant actually renders under its registered mark, when
we base our comparison on the services as they are
identified in the application and the registration,
respectively, we find that they are legally identical. As
noted above, the application identifies applicant’s
services, in part, as “design and development of computer
software, programs, systems and networks for others and
computer consultation,” and the cited registration recites
registrant’s services as including “computer software
designed for others… computer system design” and
“consulting services.”
As noted above, when marks are used in connection with
the same services, the marks do not need to be as similar
in order to support a conclusion that confusion is likely
as would be the case if the marks were used in connection
with different services. In the case at hand we do not
even need to apply this principle. Confusion is plainly
likely in view of the close similarity of these marks and
Ser No. 75/886,535
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the legal identity of the services with which they are
used.
DECISION: The refusal to register under Section
2(d) the Lanham Act is affirmed.