Maximum Publishing LLC

Trademark Trial and Appeal Board

Jan 4, 2006

No. 78375142 (T.T.A.B. Jan. 4, 2006)

Date: 1/4/2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Maximum Publishing LLC
________

Serial No. 78375142
_______

Melody B. Wirz of Dunlap, Codding & Rogers for applicant.

Richard F. White, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Quinn, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Maximum Publishing LLC to
register the mark PC BUG DOCTOR (“PC BUG” disclaimed) in
standard character format for “computer software that fixes
software errors on a computer.”1
The trademark examining attorney refused registration
pursuant to Section 2(d) of the Trademark Act on the ground
that applicant’s mark, when applied to applicant’s goods,

1 Application Serial No. 78375142, filed February 27, 2004,
asserting first use anywhere and first use in commerce on January
15, 2003.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78375142
2
so resembles the previously registered mark PC-DOCTOR for
“computer software for diagnosing computer hardware
functioning, efficiency, operation and problems” as to be
likely to cause confusion.2
When the refusal to register was made final, applicant
appealed. Applicant and the examining attorney filed
briefs. An oral hearing was not requested.
Applicant argues that the marks are different,
highlighting the differences in sound and appearance.
Further, applicant states that the term “PC DOCTOR” is
weak. Applicant also contends that the goods are
different, asserting that the examining attorney has not
shown that any entity, except for one large corporation,
regularly provides both of the types of software involved
herein. Applicant also contends that the trade channels
for its goods and registrant’s goods are different in that
applicant’s software is available as a download from the
Internet whereas registrant’s software may be ordered
online, but is not available for downloading. Further,
applicant claims that its goods, costing $39.99 for the
basic version, are sold to individual computer users for

2 Registration No. 2140150, issued March 3, 1998 under Section
2(f); combined Sections 8 and 15 affidavit accepted and
acknowledged.
Ser No. 78375142
3
their home computers, while registrant’s goods, with prices
starting at $499.00, are purchased by manufacturers,
developers, support personnel and service personnel
associated with large companies. In connection with its
weak mark argument, applicant relies upon two third-party
registrations.3
The examining attorney maintains that the marks are
nearly identical, and that the addition of the term “BUG”
in applicant’s mark is insufficient to distinguish the mark
PC BUG DOCTOR from registrant’s mark PC-DOCTOR. The
examining attorney introduced dictionary definitions for
“PC” and “bug.” The examining attorney also contends that
the goods are related and, in this connection, submitted
portions of web sites retrieved from the Internet,
including applicant’s and registrant’s, showing that these
entities offer both software for fixing software problems
and software for fixing hardware problems.

3 Applicant also submitted a listing showing it to be a leader,
based on numbers of hits of unique visitors to its web site,
among Internet web sites. The listing was offered for the first
time in applicant’s appeal brief. The examining attorney
objected to the “evidence” as untimely. The objection is
sustained. Trademark Rule 2.142(d). Accordingly, the listing
has not been considered in our determination. We hasten to add
that, even if considered, the listing does not compel a different
result on the merits.
Ser No. 78375142
4
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also: In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Applicant’s mark PC BUG DOCTOR and registrant’s mark
PC-DOCTOR look and sound alike. The marks are similarly
constructed in that both begin with PC4 and end with DOCTOR.
The only material difference between the marks is the
presence of BUG in applicant’s mark. The term BUG, in the
context of computers, means “a programming error that
causes a software application or computer system to perform
erratically, produce incorrect results, or crash

4 As shown by the dictionary definition submitted by the
examining attorney, the letters PC mean “personal computer.”
www.netlingo.com.
Ser No. 78375142
5
altogether.” www.netlingo.com. Given the descriptiveness
of this term as used in connection with applicant’s goods,
and the fact that it has been disclaimed, the addition of
BUG in applicant’s mark does not serve to sufficiently
distinguish it from registrant’s mark. Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987) [COMMCASH and COMMUNICASH are
similar in sound, appearance and meaning]. The general
rule is that a subsequent user may not appropriate the
entire mark of another and avoid a likelihood of confusion
by adding descriptive or subordinate matter thereto. See
Alberto-Culver Co. v. Helene Curtis Industries, Inc., 167
USPQ 365, 370 (TTAB 1970). The present case is no
exception. As to meaning, both marks convey the same
connotation, namely that the software will fix problems
with personal computers. Further, given that doctors treat
“bugs” in a literal sense, both marks engender the same
overall commercial impression, that is, the software,
functioning as a “doctor,” will treat a personal computer
for a “PC bug.”
Further, in finding that the marks are similar, we
have kept in mind the recollection of the average purchaser
who normally retains a general, rather than specific,
impression of trademarks. See, e.g., In re M. Serman &
Ser No. 78375142
6
Company, Inc., 223 USPQ 52 (TTAB 1984); and Gastown Inc. of
Delaware v. Gas City, Ltd., 187 USPQ 760 (TTAB 1975). The
proper test in determining likelihood of confusion does not
involve a side-by-side comparison of the marks, but rather
must be based on the overall similarities and
dissimilarities engendered by the involved marks.
In contending that there is no likelihood of
confusion, applicant asserts that the cited mark is weak,
relying on third-party registrations and a listing of
third-party Internet addresses comprising, in part,
“pcdoctor” and variations thereof. The two third-party
registrations of the marks PC/DOCTOR and ASK DOCTOR PC are
of limited probative value in our likelihood of confusion
analysis. As often stated, this evidence does not
establish that the registered marks are in use or that the
public is familiar with them. AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973).
The same deficiencies exist with respect to the Internet
addresses.
We next turn to a comparison of the goods. In
considering the goods, it is not necessary that they be
identical or even competitive in nature in order to support
a finding of likelihood of confusion. It is sufficient
that the circumstances surrounding their marketing are such
Ser No. 78375142
7
that they would be likely to be encountered by the same
persons under circumstances that would give rise, because
of the marks used in connection therewith, to the mistaken
belief that the goods originate from or are in some way
associated with the same source. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
The issue of likelihood of confusion must be determined on
the basis of the goods as set forth in the application and
the cited registration. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo
Bank, supra at 1815-16.
Applicant’s “computer software that fixes software
errors on a computer” and registrant’s “computer software
for diagnosing computer hardware functioning, efficiency,
operation and problems” are commercially related. Both
products are diagnostic software, albeit applicant’s
software deals with software problems whereas registrant’s
software deals with hardware problems. Although applicant
relies to a great extent on this distinction, the record
suggests that it is insufficient to avoid a likelihood of
confusion.
The examining attorney submitted excerpts from the
Internet web site of Symantec Corporation showing that this
Ser No. 78375142
8
third party sells software that addresses both software and
hardware issues. Also made of record is Symantec’s
registration of SYMANTEC, Registration No. 2205386,
covering software for both software and hardware
applications. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988) [third-party registrations
that individually cover different items and that are based
on use in commerce serve to suggest that the listed goods
are of a type that may emanate from a single source]. In
addition, registrant’s web site indicates that registrant’s
“diagnostic products allow end users to quickly
troubleshoot hardware and software problems.” Although
applicant’s web site touts that “PC Bug Doctor will repair
every error on your computer anytime you need it,” we agree
with applicant that there is nothing in the record to
indicate that any of applicant’s products address computer
hardware problems.
Applicant’s attempts to distinguish the goods on the
bases of trade channels and classes of consumers are of no
relevance. Applicant states that its software costs $40,
is purchased by individual users, and is available as a
download from the Internet; registrant’s software, on the
other hand, costs approximately $500, is purchased by
Ser No. 78375142
9
manufacturers and developers associated with large
companies, and is not available by download. The problem
with these distinctions is, of course, that neither the
cited registration nor the involved application include any
such limitations. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981)[“[W]here the goods in a cited registration are
broadly described and there are no limitations in the
identifications of goods as to their nature, type, channels
of trade or classes of purchasers, it is presumed that the
scope of the registration encompasses all goods of the
nature and type described, that the identified goods move
in all channels of trade that would be normal for such
goods, and that the goods would be purchased by all
potential customers.”]. Thus, we must presume that the
goods move through all reasonable trade channels to all
customary purchasers. As identified in the cited
registration and involved application, there is an overlap
in trade channels and purchasers.
The similarities between the marks and the goods, and
the similarities in trade channels and purchasers, favor a
finding of likelihood of confusion. We conclude that
purchasers familiar with registrant’s computer software for
diagnosing computer hardware functioning, efficiency,
operation and problems sold under its mark PC-DOCTOR would
Ser No. 78375142
10
be likely to believe, upon encountering applicant’s PC BUG
DOCTOR mark for computer software that fixes software
errors on a computer, that the goods originate from or are
somehow associated with or sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., supra; and
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.