Lucent Technologies Inc.

Trademark Trial and Appeal Board

Sep 15, 1999

No. 75217220 (T.T.A.B. Sep. 15, 1999)

Paper No. 9
TEH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/15/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lucent Technologies Inc.
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Serial No. 75/217,220
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W. Drew Kastner for Lucent Technologies Inc.
Angela Lykos, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______
Before Hairston, Chapman and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Lucent Technologies Inc. to
register the mark ATLANTA for "integrated circuits and
chipsets."1
The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act on the basis of the previously

1 Application Serial No. 75/217,220 filed December 17, 1996 based on
Section 1(b) of the Trademark Act.
Ser. No. 75/217,220
2
registered mark SCIENTIFIC ATLANTA for the following goods:2
"Satellite communications ground station equipment-namely,
receivers, transmitters, antennas, frequency converters and
digital earth terminals; cable television (CATV) equipment-
namely, antennas and headend apparatus, coaxial cable, set-
top terminals, taps and passives, video receivers and low
noise amplifiers; test and measurement instruments-namely,
noise and vibration analyzers, wave and spectrum analyzers
and antenna testers; electronic instrumentation and
automatic test equipment-namely, microwave antenna testers,
bit error rate testers and intermediate frequency (IF) noise
testers; energy management products-namely, residential and
commercial power usage control apparatus; and wireless home
security apparatus, alarms, and parts therefor."
When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was not requested.
We reverse for the reasons set forth below.
In any likelihood of confusion analysis, two key
considerations are the similarity of the marks and the similarity
of the goods or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976), and In
re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB
1999).
Turning first to a consideration of the goods, the Examining
Attorney argues that the respective goods are related products
despite any asserted sophistication or technical background of
2 Registration No. 1,218,938 issued October 28, 1997 on the Principal
Register to Scientific-Atlanta, Inc. located in Atlanta, Georgia. The
word "ATLANTA" has been disclaimed apart from the mark as shown.
Ser. No. 75/217,220
3
the purchasers. The Examining Attorney has made of record copies
of ten third-party registrations to show the adoption of the same
mark for both the goods of the type listed in the application and
the registration. These registrations indicate that six
different entities3 have registered their marks for integrated
circuits on the one hand, and at least one of the items listed in
the cited registration, on the other. Although these
registrations are not evidence that the marks shown therein are
in commercial use or that the public is familiar with them, they
nevertheless have some probative value to the extent that they
serve to suggest that the goods listed therein may emanate from a
single source. See In re Albert Trostel & Sons Co., supra, and
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
While the applicant’s and registrant’s goods are not identical,
the registrations provide at least some evidence to show that
applicant’s integrated circuits and certain communications and
electronics equipment provided by registrant are related
products, which if sold under the same or similar marks, would
result in a likelihood of confusion.

3 We note that the registrations are not all registered to different
entities and that they are not all based on use in commerce. One of
the registrations issued under the provisions of Section 44(e) of the
Trademark Act. Without any use in commerce basis, the probative value
of this type of registration is very limited. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Ser. No. 75/217,220
4
Thus, our decision on likelihood of confusion turns on a
comparison of the respective marks.
The Examining Attorney argues, in this regard, that ATLANTA
and SCIENTIFIC ATLANTA are similar in appearance and commercial
impression because of the shared term "ATLANTA." While the
Examining Attorney notes the disclaimer in the cited registration
and the fact that the "ATLANTA" portion of the registered mark is
geographically descriptive, she nonetheless contends that ATLANTA
is "arbitrary" with respect to the applicant’s goods.4 Further,
the Examining Attorney argues that the word "SCIENTIFIC" is
highly suggestive of the technical goods provided by registrant
and has submitted a dictionary definition of that word to support
her position.5 Thus, the Examining Attorney is arguing, in
effect, that the SCIENTIFIC portion of registrant’s mark is weak

4 In her appeal brief, the Examining Attorney indicated that she did
not refuse registration of applicant’s mark on the basis that ATLANTA
is primarily geographically descriptive because "a goods/place
association does not exist in the mind of the public with respect to
the city Atlanta and the applicant’s [products]." The record, however,
does not reflect how the Examining Attorney reached this conclusion
since she apparently never inquired as to whether the applicant’s goods
do or will originate in Atlanta, or whether the goods have or will have
any other connection with that geographic place. As the Examining
Attorney herself, recognizes, a goods/place association is presumed if
the primary significance of a mark is geographic and the applicant’s
goods come from the place named in the mark. Nevertheless, this
refusal was not made by the Examining Attorney, and the issue of
geographical descriptiveness of applicant’s mark is not before the
Board.
5 The word "scientific" is defined in The American Heritage Dictionary
of the English Language, (3rd ed. 1992) as "of or relating to, or
employing the methodology of science."
Ser. No. 75/217,220
5
and that the disclaimed geographically descriptive word "ATLANTA"
dominates.
Applicant, on the other hand, argues essentially that
ATLANTA and SCIENTIFIC ATLANTA create different commercial
impressions in view of the geographic meaning of ATLANTA in
registrant’s mark. We agree.
While marks must be compared in their entireties, one
feature of a mark may have more significance than another, and in
such a case there is nothing improper in giving greater weight to
the dominant feature. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). In this case, the only
common element in the respective marks is the word, "ATLANTA."
This word has been disclaimed in the registration and there is no
dispute as to its geographic significance in the registered
mark.6 Contrary to the Examining Attorney’s apparent position,
such disclaimed or otherwise descriptive matter is generally

6 We note the Examining Attorney’s argument that the mere addition of a
term to a registered mark will not overcome a likelihood of confusion.
This, however, is not the situation here, where the applicant’s mark
has fewer words than the registrant’s mark. Further, this may be true
if one were to incorporate an arbitrary element of a registered mark
into a composite mark. See, for example, The Wella Corp. v. California
Concept Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA 1977). That is not
the case here either. As noted above, the only shared feature of the
marks before us is a term which has been disclaimed in the cited
registration as geographically descriptive.
Ser. No. 75/217,220
6
viewed as a less dominant or less significant feature of a mark.7
See In re National Data Corp., supra and Wooster Brush Co. v.
Prager Brush Co., 231 USPQ 316 (TTAB 1986). Thus, we find that
the presence of the word ATLANTA in both marks is an insufficient
basis on which to find that the marks are similar.
We find instead that the more prominent or distinguishing
feature of registrant’s mark is the word "SCIENTIFIC" and we
believe that purchasers would look to that portion of the
registered mark to distinguish source. Although it appears that
SCIENTIFIC is suggestive of the registrant’s goods, as the
Examining Attorney claims, we believe the inclusion of this term
in registrant’s mark is sufficient to avoid confusion.

7 This is particularly true when the descriptive matter is not the
first word in the mark. The average purchaser of goods retains only a
vague recollection of marks encountered in marketplace, and this
recollection may logically be triggered by the first word of a mark,
especially if it is word or term not frequently encountered in similar
marketing experiences. See Tony Lama Company, Inc. v. Anthony Di
Stefano, 206 USPQ 176 (TTAB 1980).
Ser. No. 75/217,220
7
Thus, notwithstanding any relatedness in the goods herein,
we find that ATLANTA is not sufficiently similar to registrant’s
mark SCIENTIFIC ATLANTA as to be likely to cause confusion.
Decision: The refusal to register is reversed.
P. T. Hairston
B. A. Chapman
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board