N.A.D., Inc.

Trademark Trial and Appeal Board

Nov 30, 2000

No. 75370139 (T.T.A.B. Nov. 30, 2000)

Hearing: Paper No. 15
June 6, 2000
rls/em
11/30/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re N.A.D., Inc. also trading as North American Drager
________
Serial No. 75/370,139
_______
Stanley H. Cohen of Caesar Revise Bernstein Cohen & Pokotilow,
LTD. for N.A.D., Inc.
Wendy Goodman, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Managing Attorney).
_______
Before Simms, Cissel and Hanak, Administrative Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
N.A.D., Inc., also doing business as North American Drager
(applicant), a Pennsylvania corporation, has appealed from the
final refusal of the Trademark Examining Attorney to register
the mark SATURN INFORMATION SYSTEM ("INFORMATION SYSTEM"
disclaimed) for computer software that assists anesthesiology in
the recording and reporting of anesthesia related data.1 The

1 Application Serial No. 75/370,139, filed October 8, 1997, based upon
applicant’s allegation of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/370,139
2
Examining Attorney has refused registration under Section 2(d)
of the Act, 15 USC §1052(d), citing two registrations held by
Saturn Systems, Inc. Those registrations cover the mark SATURN
for prerecorded computer programs recorded on tape, cards or
disks,2 and the mark shown below
for prerecorded computer programs recorded on tapes, disks or
diskettes; computer hardware, namely, minicomputers,
microcomputers and parts thereof.3 The Examining Attorney
contends that applicant’s mark so resembles the registered marks
that, when applicant’s mark is used, there would be a likelihood
of confusion. Briefs have been filed and an oral hearing was
held.
We affirm.
The Examining Attorney argues that the term "SATURN" is the
most prominent part of applicant’s mark, the remaining words in
applicant’s mark being descriptive and disclaimed, and that this
dominant feature of applicant’s mark is identical to one of
registrant’s marks and is nearly identical to the other. The

2 Registration No. 1,203,413, issued August 3, 1982, Sections 8 and 15
affidavit filed.
Ser. No. 75/370,139
3
Examining Attorney notes that one feature of a mark may be more
significant in creating a commercial impression and may,
therefore, be given greater weight. With respect to the goods,
the Examining Attorney notes that the computer programs listed
in registrant’s registrations are unlimited as to the field of
use and that, therefore, we must assume that registrant’s goods
may encompass all computer programs and that they would travel
in similar channels of trade as applicant’s goods to all classes
of potential purchasers. According to the Examining Attorney,
registrant’s goods, being unlimited as to kind or field of use,
could include applicant’s specific type of computer software.
The Examining Attorney asks that we resolve any doubt in favor
of the registrant.
Applicant, on the other hand, argues that the marks are
distinctly different and readily distinguishable both visually
and aurally. Applicant also contends that the term SATURN is
widely registered and, therefore, not a distinctive mark.
Noting that registrant’s registrations issued before the Office
changed its policy concerning the identification of computer
software,4 applicant maintains that its software is intended for
a specific field of medicine, namely, anesthesiology, that its
software is expensive (over $6,000) and that knowledgeable,

3 Registration No. 1,287,729, issued July 13, 1984, Sections 8 and 15
affidavit filed.
Ser. No. 75/370,139
4
sophisticated purchasers (trained medical personnel) use
applicant’s software in hospitals. The file contains a
declaration of applicant’s product manager describing the nature
of applicant’s computer software.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant to
the factors bearing on the likelihood-of-confusion issue. In re
E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In
any likelihood-of-confusion analysis, two key considerations are
the similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1996).
While applicant’s mark and registrant’s marks are not
identical, applicant’s mark SATURN INFORMATION SYSTEM has
obvious similarities in sound and appearance to registrant’s
marks SATURN and SATURN and design. As the Examining Attorney
has noted, the words "INFORMATION SYSTEM" are descriptive and
have been disclaimed by applicant.5 These descriptive, if not
generic, words have little or no source-indicating significance.
If applicant’s and registrant’s marks were used on commercially
related products, confusion may be likely. We believe that

4 See TMEP §804.03(b) for current Office policy.
Ser. No. 75/370,139
5
these marks are so similar that even sophisticated purchasers
may well believe that the software comes from the same source.
We turn, then, to a consideration of the respective goods.
As the Examining Attorney has noted, the question of likelihood
of confusion must be determined on the basis of the goods set
forth in applicant’s application and those in the cited
registrations, rather than on what any evidence may show those
goods to be. Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Registrant’s goods are broadly identified as computer programs
recorded on tapes or disks, without any limitation as to the
kind of programs or the field of use. Accordingly, we must
assume that registrant’s goods encompass all such computer
programs including those which may be intended for the medical
field. As such, they may travel in the same channels of trade
normal for those goods and to all classes of prospective
purchasers for those goods. In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992) and cases cited therein. When the goods are so
viewed, we believe that confusion is likely. Purchasers, even
sophisticated purchasers, aware of registrant’s SATURN software
(presumed to be in the same field), who then encounter

5 Evidence of the descriptive, if not generic, nature of the terms
“information system” is attached to the final refusal.
Ser. No. 75/370,139
6
applicant’s SATURN INFORMATION SYSTEM software are likely to
believe that these goods come from the same source.
While we are sympathetic to applicant’s concern about the
scope of protection being given to the cited registrations,
applicant is not without remedies in its attempt to obtain a
registration. Applicant may, of course, seek a consent from the
owner of the cited registrations, or applicant may seek a
restriction under Section 18 of the Trademark Act, 15 USC §1068.
This remedy is available for those who believe that a
restriction in the cited registration(s) may serve to avoid a
likelihood of confusion. See Eurostar Inc. v. "Euro-Star"
Reitmoden GmbH & Co. KG, 34 USPQ2d 1266 (TTAB 1994). Compare
Electronic Data Systems Corp. v, EDSA Micro Corp., 23 USPQ2d
1460 (TTAB 1992)(no likelihood of confusion between specifically
identified computer services and programs in different fields--
computer data processing programming/information management
services and computer programs for electrical distribution
system analysis and design).6

6 In the Linkvest case, we held that registrant’s broadly identified
computer programs encompass all such computer programs including the
more specific computer programs of applicant. We also stated in that
case that we must therefore assume that the goods of applicant and
registrant will travel in the same channels of trade to the same class
of purchasers. Moreover, as noted above, the question of likelihood
of confusion must be determined based on an analysis of the goods
identified in applicant’s application vis-à-vis the goods identified
in the registration, rather than what the evidence shows the goods
actually are. Canadian Imperial Bank v. Wells Fargo Bank, supra, and
Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d
Ser. No. 75/370,139
7
Decision: The refusal of registration is affirmed.
R. L. Simms
R. F. Cissel
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

937, 16 USPQ2d 1783 (Fed. Cir. 1992). It is not at all clear to us
that applicant’s goods are “inherently” very expensive and purchased
after significant discussion and negotiation between the manufacturer
and its customers. To the extent the dissent’s conclusion of no
likelihood of confusion rests on extrinsic evidence of what
applicant’s goods actually are rather than on how they are described
in the application, we believe it to be improper.
Ser. No. 75/370,139
8
Hanak, Administrative Trademark Judge, Dissenting:
I respectfully dissent. While acknowledging that
“applicant’s mark and registrant’s marks are not identical,” the
majority goes on to state that the words INFORMATION SYSTEM in
applicant’s mark are descriptive and thus “have little or no
source-indicating significance.” (Majority opinion page 4).
I believe that the majority’s analysis is contrary to the
teachings of our primary reviewing Court. It is clear that
“marks tend to be perceived in their entireties, and all
components thereof must be given appropriate weight.” In re
Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238, 1239 (Fed. Cir.
1992). (The Court found that there was no likelihood of
confusion resulting from the contemporaneous use of VARGAS and
VARGA GIRL on identical, inexpensive consumer goods despite the
Board’s view that the word “girl” was merely descriptive of the
goods.). Indeed, our primary reviewing Court has specifically
said that portions of marks, “even if descriptive, cannot be
ignored.” In re Bed & Breakfast Registry, 791 F.2d 157, 229
USPQ 818, 819 (Fed. Cir. 1986).
With these guiding principles in mind, I am of the view
that applicant’s three word mark SATURN INFORMATION SYSTEM is
obviously different from registrant’s one word mark SATURN and
registrant’s one word mark SATURN and design. The differences
in visual appearance and pronunciation are clear. Moreover, the
Ser. No. 75/370,139
9
presence of the words INFORMATION SYSTEM in applicant’s mark,
even assuming these words are descriptive, causes applicant’s
mark to have different connotative properties than registrant’s
mark SATURN or registrant’s mark SATURN and design.
Given the fact that there are obvious differences in the
marks, I turn to a consideration of the goods of applicant and
registrant. Registrant’s goods are very broadly described as
prerecorded computer programs. This extremely broad description
of goods may encompass applicant’s very specific “computer
software that assists anesthesiology in the recording and
reporting of anesthesia related data.” However, applicant has
made a very strong showing that the computer software as
described in its application is very expensive; is purchased
only by very sophisticated individuals; and is purchased only
after a significant amount of discussion and negotiation between
a manufacturer and its customers.7
Considering first the cost of anesthesiology computer
software, applicant has established that such highly specialized
computer software is inherently very expensive. Obviously,
“confusion is less likely where goods are expensive.” Magnaflux

7 With regard to footnote 6 in the majority opinion, it should be made
clear that my analysis is based on the goods as described in the
application, and not on applicant’s actual goods. In this respect,
the Examining Attorney has never disputed applicant’s contention that
anesthesiology computer software in general is inherently very
expensive; is purchased only by very sophisticated individuals; and is
Ser. No. 75/370,139
10
Corp. v. Sonoflux Corp., 231 F.2d 669, 109 USPQ 313, 315 (CCPA
1956). See also Weiss Associates Inc. v. HRL Associates Inc.,
902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990).
In addition, applicant has also clearly demonstrated that
anesthesiology computer software is only purchased by very
sophisticated individuals and that anesthesiologists have the
largest say in making the purchasing decision. It has been held
that physicians are “a highly intelligent and discriminating
public.” Warner-Hudnut, Inc. v. Wander Co., 280 F.2d 435, 126
USPQ 411, 412 (CCPA 1960). Moreover, our primary reviewing
Court has made it clear that purchaser “sophistication is
important and often dispositive because sophisticated consumers
may be expected to exercise greater care.” Electronic Design &
Sales v. Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388,
1392 (Fed. Cir. 1992).
Finally, in addition to establishing that anesthesiology
computer software is inherently very expensive and is purchased
only by sophisticated individuals, applicant has also
established that such computer software is not something that
can be purchased in a store, but instead must be purchased by
dealing and negotiating with the manufacturer of such equipment.
In other words, anesthesiology computer software is purchased

purchased only after significant interaction between buyer and seller.
See Examining Attorney’s brief page 5.
Ser. No. 75/370,139
11
“after careful consideration,” and this is yet another factor in
reducing the likelihood of confusion. Electronic Design &
Sales, 21 USPQ2d at 1392.
In short, I would find that given the fact that
anesthesiology computer software is inherently very expensive;
is purchased only by very sophisticated individuals; and is
purchased only after direct negotiations with the manufacturer,
that under these circumstances, sophisticated purchasers would
be
able to distinguish between the marks SATURN INFORMATION SYSTEM,
on the one hand, and SATURN and SATURN and design, on the other
hand.
E. W. Hanak
Administrative Trademark
Judge, Trademark Trial
and Appeal Board