Micros Systems, Inc.

Trademark Trial and Appeal Board

Mar 6, 2015

No. 85826131 (T.T.A.B. Mar. 6, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Micros Systems, Inc.1
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Serial No. 85826131
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Andrew Roppel of Holland & Hart LLP,
for Micros Systems, Inc.
Odessa Bibbins, Trademark Examining Attorney, Law Office 118,
Thomas G. Howell, Managing Attorney.
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Before Cataldo, Wellington and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Micros Systems, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark MISTORE (in standard characters) for
Computer software for use in connection with retail point
of sale and inventory management in International Class
9.2

1 Micros Systems, Inc. acquired the application through mergers from the original
applicant, Fry, Inc. after the appeal was filed.
2 Application Serial No. 85826131 was filed on January 17, 2013, based upon Applicant’s
claim of first use anywhere at least as early as November 4, 2011 and first use in commerce
since at least as early as December 21, 2011.
Serial No. 85826131
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant's mark so resembles the registered mark for
“computer e-commerce software to allow users to perform electronic business
transactions via a global computer network”3 that, as used in connection with
Applicant's goods, it is likely to cause confusion or mistake or to deceive.
The Applicant appealed the final refusal. We reverse the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
With its reply brief, Applicant submitted for the first time, two third-party
registrations and the file of an abandoned application. Evidence submitted after the
filing of an appeal is untimely and will not ordinarily be considered by the Board.
Trademark Rule 2.142(d); 37 CFR § 2.142(d). Further, since the evidence was
submitted with the reply brief, the Examining Attorney did not have an opportunity
to object. Accordingly, the registrations and the file of the abandoned application
will not be considered. We note that even if the registrations and the file of the
abandoned application had been considered, it would not affect the outcome herein.

3 Registration No. 3630524 issued June 2, 2009. Section 8 Declaration accepted and Section
15 Declaration acknowledged. The description of the mark reads: “The mark consists of a
curved line which represents a semicircle on the top and the wording “MYSTORE XPRESS”
in stylized letters.
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II. Discussion
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 Co., 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).
The similarity or dissimiliarity of the marks.
We start our analysis with the first du Pont factor, the similarity or dissimilarity
of the marks MISTORE (in standard characters) and , which we
compare “in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005), quoting du Pont, 177
USPQ at 567. “The 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) (citation omitted). While “the
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similarity or dissimilarity of the marks is determined based on the marks in their
entireties … 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 a consideration of the marks in their entireties.” In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The cited mark consists of the term MyStore bolded and in large-sized font
above the term Xpress, which is italicized but not bolded and is in a smaller sized
font. The mark also includes a minor design above the term MyStore, consisting of
an arch extending from the letter “y” to the letter “o.” The dominant portion of the
cited mark is the term MyStore.
While acknowledging the Examining Attorney’s contention that “the letters “I”
and “Y” are similar in sound when “Y” is used as a vowel, as here,” Applicant argues
that this is “only one element and disregards the different visual appearance.” With
respect to the visual appearance, Applicant argues that the marks are not similar
because: the registered mark is “a stylized design, whereas the Applicant’s Mark,
mistore, is standard character.” Appeal Brief, p. 5, 7 TTABVUE 6. However, since
Applicant applied for the mark in standard character form, Applicant is not
restricted to depicting the mark in any particular case or font; indeed, we must
consider the possibility that it will be displayed in the same font or stylization as
that used by Registrant, including a mixture of upper and lower case lettering. See
In re Viterra Inc., 671 F3d 1358,101 USPQ2d 1905 (Fed. Cir. 2012) (“Viterra”).
Serial No. 85826131
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Applicant also argues that the marks are visually different because the
registered mark contains an additional word, XPRESS. This argument is not
persuasive. It has long been held that
the presence of an additional term in the mark does not
necessarily eliminate the likelihood of confusion if some
terms are identical. See, e.g., China Healthways Inst., Inc.
v. Wang, 491 F.3d 1341, 83 USPQ2d 1123 (Fed. Cir. 2007)
(the common word in CHI and CHI PLUS is likely to
cause confusion despite differences in the marks’ designs);
In re West Point–Pepperell, Inc., 468 F.2d 200, 175 USPQ
558 (CCPA 1972) (WEST POINT PEPPERELL likely to
cause confusion with WEST POINT for similar goods);
Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324,153
USPQ 406 (CCPA 1967) (THE LILLY as a mark for
women's dresses is likely to be confused with LILLI ANN
for women's apparel including dresses); In re United
States Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER
IMAGE for women's clothing stores and women's clothing
likely to cause confusion with CREST CAREER IMAGES
for uniforms including items of women's clothing).”
In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010)
(citations revised) (finding likelihood of confusion between Applicant’s mark ML in
standard character form for personal care and skin care products and cited mark
for skin care products). Here, Applicant’s mark MISTORE is the
phonetic equivalent of the dominant portion of the cited mark, MYSTORE, and
thus, like the terms “LILY” and “LILI” in the marks THE LILY and LILI ANN in
the Lilly Pulitzer case, may be considered essentially identical.
Next, Applicant argues “that by adding the term XPRESS, the Registered Mark
creates a distinct connotation from that of the Applicant’s Mark, namely the
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impression of speed, ease of use, scaled back features, and other connotations
commonly associated with the term ‘express.’” Appeal Brief, p. 5, TTABVUE 7. We
are not persuaded by this argument. The dominant portion of the cited mark,
MYSTORE is visually similar and aurally identical to Applicant’s mark MISTORE.
The addition of the term, “xpress” does not alter the impression created by the
marks. In fact, Applicant’s MISTORE software may be viewed as a version of
MYSTORE EXPRESS software.
Accordingly we find the marks in their entireties to be similar in appearance,
sound, connotation and commercial impression. This finding is not affected by the
arguments interposed by Applicant in its reply brief regarding the mark in the cited
registration and regarding the intended impression of its mark.
Applicant asserts that the “wording ‘MyStore’ is descriptive of [Registrant’s]
goods because it describes the purpose and use of Registrant’s software, which is to
enable consumers to operated their own e-commerce stores.” Reply Brief, p. 3, 10
TTABVUE 4. Based thereon, Applicant asserts the “the Cited Mark should only be
afforded a narrow scope of protection.” Id.
While Applicant has not submitted any evidence to establish that the term
“MyStore” is descriptive, Applicant’s argument does persuade us that the term is
not arbitrary, which does somewhat narrow the scope of protection afforded the
cited mark.
However, Applicant’s speculative arguments that its mark is a coined term that
would “not immediately be recognized by potential users as a word or compound
Serial No. 85826131
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word,” and that “the use of the ‘MI-’ in Applicant’s Mark evokes the name of
Applicant, MICROS Systems, Inc.”4 are unpersuasive. The issue is the similarity
between the marks MISTORE (in standard character form) and MYSTORE
EXPRESS (stylized with a design). Applicant’s misspelling of the term “MY STORE”
does not render “MI STORE” a “coined term.” Moreover, the intended impression of
Applicant’s mark is irrelevant. It is the actual impression of the mark in the
application, which is MISTORE, alone in standard character form that we consider.
Accordingly, we find that the first du Pont factor favors a holding of likelihood of
confusion.
The similiarity or dissimilarity and nature of the goods.
We continue our analysis with the second du Pont factor and look at the
relationship between the goods at issue. When determining the relationship
between the goods,
[t]he authority is legion that the question of registrability
of an applicant's mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant's goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014).
Applicant’s goods are identified in its application as: “computer software for use in

4 Reply Brief, p. 6, 10 TTABVUE 7.
Serial No. 85826131
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connection with retail point of sale and inventory management.” The goods in the
cited registration are identified as: “computer e-commerce software to allow users to
perform electronic business transactions via a global computer network.” Applicant
argues that “[o]n the basis of those descriptions alone, the goods and services are
distinguishable because e-commerce software and point-of-sale and inventory
management software are entirely different types of software with distinct features
and functionality.” Appeal Brief, p. 2, 7 TTABVUE 3.
To establish a relationship between the goods, the Examining Attorney relies on
dictionary definitions of “business transactions,” “point-of-sale,” and “e-commerce,”
and information about Applicant’s software, which was discussed in Applicant’s
brief. To make the dictionary definitions of record, the Examining Attorney
requested that we take judicial notice thereof. See, the following definitions:
Business transaction(s) - A business transaction, in the
context of electronic commerce, is any monetary
transaction that is made between consumers or
businesses via the Internet. Technopedia. Copyright ©
2010 – 2014 Janalta Interactive Inc., http://
www.techopedia.com/definition/26415/business-
transaction.
Point-of-sale describes capturing data at the time and
place of sale. Point of sale systems use computers or
specialized terminals that are combined with cash
registers, bar code readers, optical scanners and magnetic
stripe readers for accurately and instantly capturing the
transaction. Point of sale systems may be online to a
central computer for credit checking and inventory
updating, or they may be stand-alone machines that
store the daily transactions until they can be delivered or
transmitted to the main computer for processing. Your
Dictionary, © 1996-2014 LoveToKnow, Corp. All Rights
Reserved. Audio pronunciation provided by LoveToKnow,
Corp http://www.yourdictionary.com/point-of-sale.
Serial No. 85826131
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E-commerce means business transactions conducted
on the Internet. Collins English Dictionaries, Online ©
Collins 2014. http://www.collinsdictionary.com.
To take judicial notice of definitions from online dictionaries, the online dictionaries
must exist in printed format or have regular fixed editions. See In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). There is no evidence that either
Technopedia or Your Dictionary exists in printed format or has regular fixed
editions. As such, we cannot take judicial notice of these definitions, however, as
discussed, infra, the acceptance of these definitions does not change the outcome in
this matter. The definition of “e-commerce,” on the other hand, while obtained from
a dictionary published in the United Kingdom, was obtained from the dictionary’s
American English database so we can and do take judicial notice thereof.
The Examining Attorney argues that “electronic business transactions
encompass retail point of sale and are similar functions of Applicant’s and
Registrant’s software. Examining Attorney’s Brief, p. 6, 9 TTABVUE 7. In support
of this contention, the Examining Attorney notes that Applicant’s
“MISTORE software is a mobile application designed
exclusively for Apple products such as iPhone and iPad
which allows large retailers to increase their efficiency by
allowing their sales associates to leave the checkout
counter and engage customers anywhere on the sales
floor. This software allows sales associates to search
inventory, ring-up sales, store customer contacts, and
order products from any store within the chain, while
flowing information through to back office …’ and it
cannot be used by the general public.”
Id. This argument is not persuasive. The definition of e-commerce relied on by the
Examining Attorney requires that the business transaction be conducted on the
Serial No. 85826131
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Internet. There is no evidence that Applicant’s software relates to any business
transaction conducted on the Internet. To the contrary, access and use of the
electronic data is restricted to store personal and not the general public. Moreover,
the Examining Attorney’s conclusion is contradicted by the definition she submitted
for a business transaction in electronic commerce, which is a “monetary transaction
that is made between consumers or businesses via the Internet.”
Accordingly, we find that the sparse record in this case does not establish that
the goods are related and this du Point factor favors a reversal of the refusal.
The similarity of dissimilarity of the channels of trade and the
conditions under which and buyers to whom the goods are sold.
The Examining Attorney argues that “there are no limitations as to channels of
trade or classes of purchasers in the identification of goods in Applicant’s
application, … it is therefore presumed that Applicant’s goods move in all channels
of trade normal for those goods, and that they are available to all classes of
purchasers for those goods. Examining Attorney’s Brief, pp. 6-7, 9 TTABVUE 7-8.
However, the Examining Attorney has not submitted evidence showing what are
the usual or normal channels of trade for Applicant’s goods. Moreover, since the
Examining Attorney has not established that Applicant’s goods are related to the
goods in the cited registration, we cannot presume that the channels of trade for the
respective identified goods are either the same or closely related. See Viterra at
1908.
Accordingly, we find these du Pont factors to be neutral.

Serial No. 85826131
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Conclusion.
Having considered all the evidence and argument on the relevant du Pont
factors, whether specifically discussed herein or not, we find that the differences in
the goods outweigh any similarity between the marks at issue and thus, Applicant’s
mark, MISTORE is not likely to cause confusion with the mark in the cited
registration, MYSTORE XPRESS & design.
Decision: The refusal to register Applicant’s mark MISTORE is reversed.