Micom Communications Corp.

Trademark Trial and Appeal Board

Jun 3, 1997

EX (T.T.A.B. Jun. 3, 1997)

Paper No. 15
THIS DISPOSITION IS NOT June 3, 1997
CITABLE AS PRECEDENT OF THE TTAB
CEW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Micom Communications Corp.
___________
Serial Nos. 74/494,266 and 74/495,088
___________
Ellsworth R. Roston of Roston & Schwartz for applicant.
Henry S. Zak, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
____________
Before Cissel, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Micom Communications Corp. has filed trademark
applications to register the marks MICROBAND and MICROBAND
ATM for “apparatus for wide area network telecommunications
systems using cell relay and frame relay technologies to
manage a combination of voice, synchronous and asynchronous
data and local area network (LAN) data from different
Serial Nos. 74/494,266 and 74/495,088
2
multiplexers in a network to maintain a high efficiency in
the network over a wide range of variable line rates.”1
In both cases, the Trademark Examining Attorney has
finally refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s marks so resemble the mark MICROBAND and design,
as shown below, previously registered for “telecommunication
services,”2 that, if used on or in connection with
applicant’s goods, the marks would be likely to cause
confusion or mistake or to deceive.

Applicant has appealed in both cases. Both applicant
and the Examining Attorney have filed briefs, but an oral
hearing was not requested in either case. In the interest

1 Respectively, Serial Nos. 74/494,266, filed February 25, 1994, and
74/495,088, filed February 28, 1994, both in International Class 9 and
based on the asserions of bona fide intentions to use the marks in
commerce.
2 Registration No. 1,101,742 issued September 5, 1978, to Microband
Corporation of America, in International Class 38. (Section 8 affidavit
accepted.)
Serial Nos. 74/494,266 and 74/495,088
3
of judicial economy, as the issues in these two appeals are
identical and the facts are similar, we consider the appeals
together. In each case, we affirm the refusal to register.
In a likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. We consider, first, the
similarities between the parties’ marks. Registrant’s mark
consists of the term MICROBAND in a non-distinctive script
above a series of wavy lines. Applicant’s marks have no
design element and consist, in the one case, of the term
MICROBAND and, in the other case, of the term MICROBAND
followed by the letters “ATM.”
The Examining Attorney contends that the word MICROBAND
is the dominant portion of registrant’s mark; that there is
no evidence to suggest that MICROBAND is other than a strong
mark in connection with the services identified in the
registration; that there is no support for applicant’s
contention that the design portion of the registered mark
represents the letter “M”; that applicant’s marks are
virtually identical to the word portion of registrant’s
mark; and that the letters “ATM” “have little significance
in altering the commercial impression of the applicant’s
mark [MICROBAND ATM].” Applicant contends that registrant’s
mark is, in fact, MICROBAND M, and that the “M” design
Serial Nos. 74/494,266 and 74/495,088
4
portion of registrant’s mark is the dominant portion of the
mark.
In determining the similarities between the marks of
the parties, we must compare the marks in their entireties.
However, we are guided, equally, by the well-established
principle that, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, “there
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
We conclude that MICROBAND is the dominant portion of
registrant’s mark. The word portion of a mark comprised of
both a word and a design is normally accorded greater weight
because it would be used by purchasers to request the goods.
In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228
USPQ 461, 462 (TTAB 1985). Such a conclusion is warranted
in this case as the stylized script in which the word
MICROBAND appears in registrant’s mark is non-distinctive;
the placement of the wavy line design serves to underline,
and thus emphasize, the word portion of registrant’s mark
even though, as applicant notes, the wavy line design in
Serial Nos. 74/494,266 and 74/495,088
5
registrant’s mark may be slightly larger than the word
MICROBAND; and any connotation to the wavy line design
likewise supports and emphasizes the word portion of
registrant’s mark.3 The design aspect of registrant’s mark
has less impact than the word portion on the overall
commercial impression of the mark.
Applicant’s mark, MICROBAND, is identical to the
dominant word portion of registrant’s mark. Additionally,
we find that MICROBAND is the dominant portion of
applicant’s mark, MICROBAND ATM. There is no evidence that
ATM is other than an arbitrary combination of letters in
connection with applicant’s goods as identified and, as
such, ATM would be perceived as modifying MICROBAND. Thus,
the dominant portion of applicant’s mark, MICROBAND ATM, is
also identical to the dominant portion of registrant’s mark.
The record contains no evidence regarding the meaning
or connotation of applicant’s and registrant’s marks.
However, we take judicial notice of the following
definitions:4
micro- combining form (1)(a) little, small,
minute; (b) exceptionally little, abnormally
small.
band n. ...(8)(a) a specific range of wavelengths
or frequencies, as in radio broadcasting or sound
or light transmission; (b) any of the stripes or
colors in a spectrum.

3 It is likely that the design may be perceived as either echoing the
“M” in MICROBAND, suggesting a radio or other type of waveband, or
underlining the word MICROBAND with an abstract line pattern.
4 Webster’s New World College Dictionary, 3rd ed., 1997.
Serial Nos. 74/494,266 and 74/495,088
6
telecommunications n. communication by electronic
or electric means, as through radio, telephone,
telegraph, television or computers.
We have insufficient evidence to conclude that MICROBAND is
an actual term used in the telecommunications field or that
it is a commonly used term. However, in view of the
definitions of “telecommunications” and of the component
parts of MICROBAND, a consumer familiar with the field of
telecommunications may understand the term MICROBAND to be
at least suggestive of a characteristic of the wavelength or
frequency used in connection with some telecommunications
apparatus and/or services. Despite this, we cannot conclude
on this record that the term MICROBAND is either merely
descriptive or highly suggestive in connection with either
applicant’s or registrant’s identified goods or services so
as to warrant a conclusion that the marks may be
distinguished by minor variations therein. See, e.g., Plus
Products v. Redken Laboratories, Inc., 199 USPQ 111, 116-117
(TTAB 1978) and cases cited therein at 117. Rather, in the
cases before us, we find that, to the extent that one of
applicant’s marks includes the additional term ATM, or
registrant’s mark includes a wavy line design, such
secondary characteristics would be perceived as minor
variations of the MICROBAND mark.
Further, the test of likelihood of confusion is not
whether the marks can be distinguished when subjected to a
Serial Nos. 74/494,266 and 74/495,088
7
side-by-side comparison. The issue is whether the marks
create similar overall commercial impressions. Visual
Information Institute, Inc. v. Vicon Industries Inc., 209
USPQ 179 (TTAB 1980). Thus, as MICROBAND is the dominant
portion of both parties’ marks, we find that the overall
commercial impression of applicant’s and registrant’s marks
is substantially similar.
Turning our consideration to the goods herein, we begin
with the premise that we must determine the issue of
likelihood of confusion on the basis of the goods as set
forth in the application and the cited registration. See In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
The Examining Attorney contends that
“telecommunications” includes all modes of electronic or
electric communication; and that registrant’s broadly
defined “telecommunications services” encompass those areas
in which applicant’s telecommunications systems would be
involved. Applicant’s goods are identified as apparatus for
a specific type of telecommunications system and are limited
as to the nature and function of the apparatus. Applicant
contends that by so limiting its identification of goods, it
has sufficiently distinguished its goods from registrant’s
services; that the classification of registrant’s services
in International class 38 and applicant’s goods in
International class 9 further distinguishes the parties’
Serial Nos. 74/494,266 and 74/495,088
8
goods and services; that the identification of registrant’s
services is inappropriately broad and, further, does not
accurately reflect the actual nature of registrant’s
services; that applicant’s goods are for use in a distinctly
different field of telecommunications from the field in
which registrant is involved and confusion as to source is
unlikely among the sophisticated purchasers of the parties’
goods and services; and that registrant may not be using its
mark. In support of its contentions, applicant submitted a
copy of a Business Information Report prepared by Dun &
Bradstreet and dated January 27, 1995.
Applicant’s contentions regarding the actual nature
of registrant’s services and the extent of its use of its
registered mark are irrelevant in the proceeding before us.
Such allegations are a collateral attack upon the validity
of the cited registration, which matters are properly
addressed before the PTO in a cancellation proceeding. In
re Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA
1971); In re Peebles, Inc., 23 USPQ2d 1795 (TTAB 1992).
Likewise, it is irrelevant that applicant’s goods and
registrant’s services are classified in different
International classes. The classification of goods and
services in trademark applications is for the administrative
ease of the PTO and is neither relevant to, nor
Serial Nos. 74/494,266 and 74/495,088
9
determinative of, likelihood of confusion. In re Sailerbrau
Franz Sailer, 23 USPQ2d 1719 (TTAB 1992).
In considering the goods and services of the parties
herein, we are cognizant of the general rule that goods or
services need not be identical or even competitive in order
to support a finding of likelihood of confusion. Rather, it
is enough that goods or services are related in some manner
or that some circumstances surrounding their marketing are
such that they would be likely to be seen by the same
persons under circumstances which could give rise, because
of the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited
therein.
As defined herein, “telecommunications” is an extremely
broad term. Thus, registrant’s services as identified cover
the full range of telecommunications services. These
services would necessarily involve telecommunications
apparatus, including applicant’s goods. The questions not
answered by the record before us include whether the
purchasers of telecommunications services also purchase the
apparatus for telecommunications systems, in particular,
goods of the type identified in the applications herein;
Serial Nos. 74/494,266 and 74/495,088
10
and, if so, the extent to which purchases of registrant’s
services and applicant’s goods involve careful consideration
by sophisticated purchasers.
The Examining Attorney cites the Board’s decision in
Corinthian Broadcasting Corporation v. Nippon Electric Co.,
Ltd., 219 USPQ 733 (1983), for the proposition that
“telecommunications services and telecommunications goods
[are] related for the purpose of determining likelihood of
confusion.” We emphasize that there is no per se rule in
this regard. Rather, in each case we must determine the
relationship between goods and/or services, if any, based on
the record before us. In the cited case, opposer, the owner
of a registration of the mark TVS for “television
broadcasting services,” opposed the registration of TVS for
“transmitters and receivers of still television pictures.”
In finding likelihood of confusion based on the extensive
inter partes record before it, the Board concluded:
purchasers of opposer’s services and purchasers of
goods encompassed by applicant’s recitation of
goods in its application would overlap and said
purchasers would be likely to ascribe a common
origin or sponsorship of the goods and services.
While the respective purchasers of the goods and
services may be sophisticated and discriminating,
they are not immune from confusion as to the
source or origin of products and services sold
under the same marks.
Similarly, in this case, in view of the breadth of
registrant’s identified services and the nature of
Serial Nos. 74/494,266 and 74/495,088
11
applicant’s goods, we believe that purchasers of applicant’s
goods and registrant’s services are likely to overlap and to
ascribe a common origin or sponsorship to the goods or
services, regardless of the purchasers’ level of
sophistication or the degree of discrimination involved in
such purchases. It is well established that one who adopts
a mark similar to the mark of another for the same or
closely related goods or services does so at his own peril,
and, thus, we resolve any doubt that we may have as to
likelihood of confusion against the newcomer and in favor of
the registrant. See, W.R. Grace & Co. v. Herbert J. Meyer
Industries, Inc., 190 USPQ 308 (TTAB 1976).
We conclude that in view of the substantial similarity
in the commercial impressions of applicant’s marks,
MICROBAND and MICROBAND ATM and registrant’s mark, MICROBAND
and design, their contemporaneous use on the
telecommunications goods and services involved in this case
would be likely to cause confusion as to the source or
sponsorship of such goods and services.
Serial Nos. 74/494,266 and 74/495,088
12
Decision: The refusal under Section 2(d) of the Act is
affirmed.
R. F. Cissel
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board