Midwest Wireless Communi-cations, L.L.C.

Trademark Trial and Appeal Board

Mar 2, 2001

No. 75466859 (T.T.A.B. Mar. 2, 2001)

03/02/01
Paper No. 11
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Midwest Wireless Communications, L.L.C.
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Serial No. 75/466,859
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Eric D. Paulsrud of Leonard, Street and Deinard for Midwest
Wireless Communications, L.L.C.
Howard Smiga, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
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Before Seeherman, Quinn and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Midwest Wireless Communications, L.L.C. has appealed
from the final refusal of the Trademark Examining Attorney
to register CLEARLY DIGITAL, with the word DIGITAL
disclaimed, as a mark for telephone communication services
for voice and data.1 Registration has been refused pursuant
to Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on
1 Application Serial No. 75/466,859, filed April 13, 1998, based
on an asserted bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/466,859
2
the ground of likelihood of confusion with the mark CLEARLY
DIGITAL (with the word DIGITAL disclaimed), registered for
the following goods:
audio consoles comprising audio mixing
devices for multiple audio sources and
processors; broadcast studio
workstations comprising computer
hardware and operating software for
broadcast information; AM, FM, and TV
transmitters; radio and television
exciters; and satellite earth stations
comprising digital encoders and
decoders.2
The appeal has been fully briefed.3 An oral hearing
was not requested.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
the most important considerations are the similarities or
2 Registration No. 2,103,879, issued October 7, 1997.
3 With its reply brief applicant has submitted several decisions
of the Board which are marked “Not Citable as Precedent,” and
asked us to consider them as precedent, relying on a decision by
the 8th Circuit in Anastasoff v. United States, --F.3d –(8th Cir.
2000). In view of the fact that the Court of Appeals for the
Federal Circuit, our principal reviewing court, continues to mark
decisions “not citable as precedent,” we decline to depart from
the practice set forth in General Mills Inc. v. Health Valley
Foods, 24 USPQ2d 1270, 1275, n. 9 (TTAB 1992). We would also
point out that the principles enunciated in the cases applicant
has submitted have also been stated in “published” decisions of
the Board.
Ser. No. 75/466,859
3
dissimilarities between the marks and the similarities or
dissimilarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
Turning first to the goods, the Examining Attorney has
correctly noted that, in order to support a holding of
likelihood of confusion, it is not necessary that the goods
or services of the parties be similar or competitive. See
In re International Telephone & Telegraph Corp., 197 USPQ
910 (TTAB 1978). However, it must be demonstrated that the
goods or services are related in some manner.
In this case, it appears that the basis for the
Examining Attorney’s assertion that applicant’s services
and the registrant’s goods are related is that they both
“relate to the communications industry.” Brief, p. 6. It
is well established, however, that it is not sufficient
merely to find one term that may generically describe the
goods and services. See General Electric Company v. Graham
Magnetics Incorporated, 197 USPQ 690 (TTAB 1977); Harvey
Hubbell Incorporated v. Tokyo Seimitsu Co., Ltd., 188 USPQ
517 (TTAB 1975). The Examining Attorney also asserts that
the “satellite earth stations comprising digital encoders
and decoders” listed in the registration could be used to
Ser. No. 75/466,859
4
provide the telephone communications services identified in
the application.
It is clear from the registrant’s identification that
its goods are used by radio and television broadcasting
studios and the like. Clearly these are expensive products
which are bought by sophisticated and knowledgeable
purchasers in those fields. They are not impulse
purchases, but will be made with a great deal of care.
Applicant’s services, on the other hand, are telephone
communications which are directed to the public at large.
Applicant has explained that it is a regional
telecommunications company which provides
telecommunications services to individuals and businesses,
and CLEARLY DIGITAL has been adopted as a mark for one of
the communications packages it offers.
As far as we can tell from this record, the only
consumers who might encounter both the registrant’s mark
for its goods and applicant’s mark for its services are
people in the broadcast industry or, perhaps, in the case
of registrant’s satellite earth stations, those in the
telecommunications industry. However, those purchasers
will be highly knowledgeable and sophisticated.
Such purchasers are not likely to assume that
telephone communications services and the equipment which
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5
is identified in the registrant’s registration emanate from
the same source merely because the same mark CLEARLY
DIGITAL is used for both. Although there is no evidence of
third-party use or registration of this mark, it is
certainly highly suggestive for both applicant’s services
and registrant’s goods. The word DIGITAL has been
disclaimed in both marks, thus indicating its descriptive
significance, while the word CLEARLY has an obvious
laudatory suggestiveness. Because of this, sophisticated
consumers are not likely to assume that all goods and
services, however tangentially related to the
communications field, emanate from the same source simply
because they are offered under the same word mark. In this
connection, we note that the Examining Attorney has
provided no evidence, such as third-party registrations, to
indicate that companies which offer telephone
communications services also sell satellite earth stations,
TV transmitters, and the like.
Accordingly, in view of the differences in the
services and goods, the sophistication of the common class
of purchasers, the care with which purchases are made, and
the weakness of the cited mark, we find, on this record,
that the Examining Attorney has failed to prove that
Ser. No. 75/466,859
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applicant’s mark, if used for its services, would be likely
to cause confusion with the cited registration.
Decision: The refusal of registration is reversed.