MobileAria, Inc.

Trademark Trial and Appeal Board

Mar 16, 2004

No. 76290375 (T.T.A.B. Mar. 16, 2004)

Mailed: March 16, 2004
Paper No. 13
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re MobileAria, Inc.
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Serial No. 76290375
_______
Heather A. Dunn, Esq. of Gray Cary Ware & Freidenrich LLP
for MobileAria, Inc.
Tanya L. Amos, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
MobileAria, Inc. has filed an application to register
the mark MOBILEARIA for “computer communications software
for providing voice-enabled access to the Internet via
mobile devices, namely, personal digital assistants,
personal computers, wireless telephones, and wireless
communication devices.”1
1 Serial No. 76290375, filed July 24, 2001, based on applicant’s
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76290375
2
The Trademark Examining Attorney has finally refused
to register applicant’s mark under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), in view of the
registration of the mark ARIA for “computer software for
use in voice mail and voice messaging, electronic mail,
automated attendant, interactive voice response, call
processing, word processing, fax processing, video and
multimedia applications, namely, for integrating voice
messaging, electronic mail and business applications
software, and for graphical user interfaces, programming
tools and utilities and program development, and
instructional manuals distributed therewith.”2
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant
to the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations
are the similarity of the goods and the similarity of the
2 Registration No. 2,074,241, issued June 24, 1997, Sections 8
and 15 affidavits accepted and acknowledged, respectively.
Ser No. 76290375
3
marks. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The Examining Attorney argues that ARIA is the
dominant part of the marks and that applicant has simply
taken registrant’s mark and combined it with the highly
descriptive term MOBILE. Further, the Examining Attorney
contends that the marks are quite similar in appearance and
commercial impression. With respect to the goods, the
Examining Attorney maintains that they are related in that
both applicant’s and registrant’s computer software would
be sold to the same purchasers in the same channels of
trade. Further, the Examining Attorney argues that these
kinds of computer software emanate from the same sources.
The Examining Attorney submitted copies of third-party
registrations which she maintains show that “the same mark
is registered for access software and telecommunications
software.” (Brief, p. 9).
Applicant argues that while applicant’s and
registrant’s goods are both computer software, they are
“different and do not overlap in any way.” (Brief, p. 16).
According to applicant, its goods are software products
that allow a user to access information available on the
Internet by voice command whereas registrant’s goods are
software products for integrated messaging. Further,
Ser No. 76290375
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applicant argues that the third-party registrations
submitted by the Examining Attorney do not establish that
applicant’s and registrant’s types of computer software are
related because the third-party registrations cover a wide
range of products. With respect to the marks, applicant
argues that its mark is specifically different from
registrant’s mark because its mark includes the word
MOBILE. Applicant argues that the term “mobile” is not
descriptive of its goods, but rather merely suggests some
relationship to mobile devices. When the marks are viewed
in their entireties, applicant maintains that its mark is
dissimilar from registrant’s mark. Finally, applicant
maintains that the term ARIA is widely used in the
communications field and applicant’s mark is therefore weak
and entitled to a limited scope of protection. In support
of its contention, applicant submitted a substantial amount
of evidence which it maintains establishes that ARIA is
widely used in the communications field.
We turn first to a consideration of applicant’s and
registrant’s marks in their entireties to determine if they
are similar in sound, appearance or meaning such that they
convey similar overall commercial impressions. The test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
Ser No. 76290375
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are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of
the goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general, rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In this case, both marks contain the same term ARIA.
To this term, applicant adds the descriptive word MOBILE.
Regarding descriptive terms, our primary reviewing court
has noted that the descriptive component of mark may be
given little weight in reaching a conclusion on likelihood
of confusion. Cunningham v. Laser Golf Corp., 222 F.3d
942, 55 USPQ2d 1842 (Fed. Cir. 2000) [LASERSWING likely to
be confused with LASER for golf clubs]; Wella Corp. v.
California Concept Corp., 558 F.2d 1019., 194 USPQ 419, 422
(CCPA 1977) [CALIFORNIA CONCEPT and surfer design likely to
be confused with CONCEPT for hair care products].
We agree with the Examining Attorney that the term
MOBILE is descriptive of applicant’s goods inasmuch as
Ser No. 76290375
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applicant’s computer software is used to provide voice-
enabled access to the Internet via mobile devices.3 Thus,
consumers would be unlikely to rely on the term “mobile” in
distinguishing a product designed for use in connection
with mobile devices. We find therefore that overall the
marks are substantially similar in sound, appearance,
meaning and commercial impression.
Next, we consider the goods. Applicant’s goods are
“computer communications software for providing voice-
enabled access to the Internet via mobile devices, namely
personal digital assistants, personal computers, wireless
telephones, and wireless communication devices,” and
registrant’s goods are “computer software for use in voice
mail and voice messaging, electronic mail, automated
attendant, interactive voice response, call processing,
word processing, fax processing, video and multimedia
3 The Examining Attorney has made of record an excerpt from
www.netlingo.com defining “mobile” as:
The ability to move around, it also refers to anything
that can be moved around (or transported) and still
function properly. It usually describes handheld
devices, such as PDAs and cell phones (that is, mobile
phones), but it can also refer to laptops or other
portable devices.
Although applicant submitted another dictionary excerpt which
shows that the term has other meanings, it is well settled that
descriptiveness is determined not in the abstract but in relation
to the involved goods. The other meanings of mobile are not
pertinent to computer software for providing voice-enabled access
to the Internet via mobile devices.
Ser No. 76290375
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applications, namely for integrating voice messaging,
electronic mail and business applications software, and for
graphical user interfaces, programming tools and utilities
and program development and instructional manuals
distributed therewith.”
It is well settled that the issue of likelihood of
confusion herein must be determined on the basis of the
goods as they are identified in the involved application
and the cited registration, regardless of what the evidence
may show as to the nature of the applicant’s and/or
registrant’s goods. Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987).
Further, it is not necessary that the respective goods
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is
sufficient that the goods are related in some manner, or
that the circumstances surrounding their marketing are
such, that they would be likely to be encountered by the
same persons in situations that would 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
source or that there is an association or connection
between the sources of the respective goods. In re
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Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978). We readily acknowledge that there is no per
se rule relating to likelihood of confusion in the computer
field. In re Quadrum Corp., 228 USPQ 863, 865 (TTAB 1985).
We find that applicant’s and registrant’s computer
software products are sufficiently related that, when sold
under the substantially similar marks in this case,
confusion is likely to occur among purchasers. At the
outset, we note that both applicant’s and registrant’s
goods are in the nature of computer communications
software. Moreover, in view of the fact that registrant’s
identification of goods is broadly worded, we do not view
registrant’s goods as simply being in the nature of
computer software for integrated messaging. Rather, the
registrant’s identification of goods is broad enough to
encompass computer software for use in voice mail and voice
messaging, electronic mail, automated attendant,
interactive voice response, call processing, word
processing, fax processing, and for use in video and
multimedia applications, namely for integrating voice
messaging, electronic mail and business applications.
Further, in the absence of any limitations in the
application and registration, we must assume that
Ser No. 76290375
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applicant’s and registrant’s computer software products
travel in all the normal channels of trade to all
prospective purchasers, and this would include large
commercial enterprises as well as individual computer
users.
Further, the evidence of record includes copies of at
least six use-based third-party registrations which cover
the types of computer communications software involved in
this case.4 For example: Registration No. 2,509,184 for
the mark CSIWEBMAIL is for “on-line downloadable computer
software to enable access to secured networks over global
computer networks to provide services used by businesses
and institutions; namely, electronic mail, messaging …”;
Registration No. 2,626,010 for the mark UMBANET is for
“computer software, namely, telecommunications software for
electronic mail, internet access …instant messaging, … and
wireless communication, … electronic mail software for
electronic mail applications…”; Registration No. 2,591,410
for the mark ALEXIS is for “computer hardware and software
4 We agree with applicant that the probative value of some of the
third-party registrations submitted by the Trademark Examining
Attorney is lessened considerably to the extent that they cover
goods or services not involved in this case, and to the extent
that they are for house marks and/or cover too wide a variety of
goods.
Ser No. 76290375
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for controlling and accessing a private branch telephony
system utilizing a world wide computer network to provide
telephone services, world wide computer network access,
voice recognition and remote computer access providing
telecommunications connections to a global computer
network”; Registration No. 2,629,628 for the mark MAILSITE
is for “computer software for sending and receiving
electronic mail and for use in enabling computer users to
access the global information network and create virtual
mailboxes”; Registration No. 2,585,548 for the mark WHISTLE
is for “computer hardware and software for … providing
electronic mail delivery and notification applications,
access and publishing capabilities on a global computer
network; and network management software”; and Registration
No. 2,516,538 for the mark MAP is for downloadable computer
software used to allow remote users to access data and
information on the global computer network through personal
digital assistants, two-way pagers, laptop computers, web
phones and cell phones, used to create on-line
presentations, used to arrange deliveries, used to exchange
electronic mail, and used to place orders, all by means of
a global computer network”.
Although these registrations are not evidence that the
marks shown therein are in commercial use, or that the
Ser No. 76290375
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public is familiar with them, they nevertheless are
probative evidence to the extent that they suggest that the
goods identified therein are of a type which may emanate
from a single source under a single mark. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783; In re Mucky Duck
Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
In this case, an individual or company may purchase
registrant’s computer software for use in voice mail and
voice messaging and/or electronic mail and applicant’s
computer communications software for providing voice-
enabled access to the Internet via mobile devices. Persons
familiar with registrant’s ARIA computer software, upon
encountering applicant’s MOBILEARIA computer software, may
well believe that the latter software is a type originating
from registrant for use with mobile devices.
Applicant argues that marks consisting of or
containing the word “Aria” are weak marks and registrant’s
ARIA mark is therefore entitled to a limited scope of
protection. Applicant contends that the word “Aria” is so
frequently used in the communications field that no one
party is entitled to claim exclusive rights thereto. As
noted earlier, applicant submitted a substantial amount of
evidence in an effort to support its contention that ARIA
marks are not uncommon. The evidence consists of:
Ser No. 76290375
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printouts of web site pages of companies with a trade name
that contains ARIA; the results of searches of
“Switchboard.com” (electronic yellow pages), Dialog
American Business Directory, and Dun & Bradstreet for
businesses with a trade name that contains ARIA; a list of
third-party applications and registrations for marks that
contain ARIA from the USPTO data base; and four third-party
registrations for marks that include ARIA. As additional
support for its position, applicant relies on Amstar Corp.
v. Domino’s Pizza, Inc., 615 F.2d 252, 205 USPQ 969, 975
(5th Cir. 1980,) cert denied, 494 U.S. 899 (1980); and In re
Broadway Chicken Inc., 38 USPQ2d 159 (TTAB 1996).
With respect to search reports generally, it has long
been the Board’s view that search reports are not evidence
that the marks and/or trade names therein are in use. See,
e.g., National Football League v. Jasper Alliance Corp., 16
USPQ2d 1212, 1215 at n. 3 (TTAB 1990); and In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983). See
also: Charette Corp. v. Bowater Communication Papers Inc.,
13 USPQ2d 2040, 2043 (TTAB 1989) [not clear from a search
report how terms are being presented, that is, whether they
are intended to be trademarks, trade names or other]; and
Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d
1835, 1839 at n. 5 [“the probative value of such reports is
Ser No. 76290375
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limited, since the reports do not indicate the extent to
which a company’s name is used or what opportunity the
public has had to become aware of any use.”]. See
generally: J. T. McCarthy, McCarthy on Trademarks and
Unfair Competition, §11.27 at 145 (3rd ed. 1992) [“Merely
introducing a list of third-party uses alone is not
particularly persuasive. To present a more compelling
case, [a party] should go further to show how extensive
these uses are and how long they have continued . . . “].
We recognize that in the Broadway Chicken case, the
Board gave weight to a Dun & Bradstreet report and yellow
and white pages listings of “Broadway” restaurant, bar and
related services. Of course, in contrast to Broadway
Chicken, the present case involves trademarks rather than
service marks. As noted by our primary reviewing court in
Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed Cir. 1993), “[a] service mark is
different from a mark for goods, especially in the manner
it is used in commerce. The legally sufficient use giving
rise to rights in a mark for goods is derived from placing
of the mark in some manner on the goods either directly or
on their containers or packaging.”
In this case, applicant’s evidence of third-party use
is lacking in a number of respects. With respect to the
Ser No. 76290375
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printouts from “Switchboard.com” and the Dialog of American
Business Directory, they are of little probative value
because we are unable to ascertain from the limited
information provided (i.e., company name, address and, in
some cases the general category of the business) whether
any of the companies listed therein are using ARIA trade
names or marks in connection with goods or services even
arguably related to the goods involved in this case. The
printout from Dun & Bradstreet contains company names and
addresses and in the case of some of the businesses, the
type of business is also provided. We have carefully
reviewed this printout but only two of the businesses
listed therein appear to be in a field that is arguably
related to computer communications software, namely Arias
Systems Concepts, Inc., whose line of business is listed as
system software engineering, and Aria Software Inc., whose
line of business is listed as prepackaged software
services. The printouts of the web site pages show that
there are several companies which are offering services
which are arguably related to computer communications
software, e.g., “Aria Solutions Inc.” provides system
integration, development and consulting; “Ariasys” is a
global technology consulting firm; and “Aria Networks”
offers Internet and computer network consulting.
Ser No. 76290375
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With respect to the four third-party registrations, it
is well settled that such registrations are not evidence
that the marks depicted therein are in use or that the
public is aware of them, and thus they are of little
probative value. Moreover, we note that three of the
registrations cover goods which are entirely unrelated to
the goods involved in this case. (i.e., telephone calling
cards; telephone headsets; and portable digital audio
player). The other registration covers a wireless
telephone call system.
Further, as to the list of third-party applications
and registrations, it is of limited probative value for the
reason that it consists simply of a list of marks by
registration or application number, and thus fails to
indicate the particular goods in connection with which the
marks are registered or are sought to be registered.
In sum, the existence of a few companies in the broad
fields of technology and communications does not justify
the registration of a confusingly similar mark. In
contrast to the Broadway Chicken case where there was
evidence of widespread third-party use of trade names/marks
containing the term “Broadway” for the services involved in
that case, i.e., restaurant services, as well as other
closely related goods and services, the evidence here does
Ser No. 76290375
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not demonstrate that a substantial number of third parties
are using the term “Aria” in connection with the types of
computer communications software involved herein or closely
related goods and services.
As to applicant’s reliance on Amstar Corp. v. Domino’s
Pizza, Inc., suffice it to say that unlike this ex parte
appeal, that case involved an infringement and unfair
competition claim.
Several other matters require comment. Applicant
argues that registrant’s ARIA mark is not a coined term.
However, there is no requirement that a mark be coined in
order to be entitled to protection from a confusingly
similar mark.
Also, applicant submitted the results of a “Google”
search of “mobilearia” and argues that because the first
fifty “hits” are references to applicant, this establishes
that its MOBILEARIA mark is not weak. Rather, according to
applicant, its mark is distinctive and is likely to be
recognized by consumers. Suffice it to say that the
strength/weakness of applicant’s mark is not an issue in
this ex parte appeal.
In view of the foregoing, we conclude that purchasers
and prospective purchasers familiar with the registered
mark ARIA for the various computer communications software
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identified in the cited registration, would be likely to
believe, upon encountering the substantially similar mark
MOBILEARIA for applicant’s computer communications software
for providing voice-enabled access to the Internet via
mobile devices, namely, personal digital assistants,
personal computers, wireless telephones, and wireless
communication devices, that such closely related goods
emanate from or are associated with or sponsored by the
same source.
Decision: The refusal to register under Section 2(d)
is affirmed.