Parasol Systems, Inc.

Trademark Trial and Appeal Board

Jun 6, 2001

No. 75585377 (T.T.A.B. Jun. 6, 2001)

6/6/01
Paper No. 10
GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Parasol Systems, Inc.
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Serial No. 75/585,377
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Daniel R. Woodruff and Andrew T. Hoyne of Armstrong
Teasdale LLP for Parasol Systems, Inc.
Caroline Fong Weimer, Trademark Examining Attorney, Law
Office 113 (Meryl Hershkowitz, Managing Attorney).
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Before Hairston, Walters and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Parasol Systems, Inc. has filed an application to
register IMPACT as a trademark in International Class 9 for
goods identified as "computer software for managing sales
and customer information in the chemical distribution and
manufacturing industry, and manuals sold as a unit
therefor."1
1 Serial No. 75/585,377, filed November 9, 1998, based on
applicant's allegation of a bona fide intention to use the mark
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/585,377
2
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant's mark, as used in
connection with the identified goods, is likely to cause
confusion or mistake or to deceive consumers, in view of
the prior registration of the mark CLEAR IMPACT for
"computer software in the nature of a database containing
customer information."2
When the refusal was made final, applicant appealed.
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested. We affirm
the refusal.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion presented by this case,
two key considerations are the similarities of the marks
and the similarities of the goods. Federated Foods, Inc.
in commerce. An amendment to allege use was filed which asserts
first use as of December 1998 and first use in commerce as of
January 1999.
2 Registration No. 1,998,807, issued September 3, 1996 to Impact
Development Inc.
Ser. No. 75/585,377
3
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
We begin with the goods and note that our analysis of
the similarity or relatedness of the goods is based on the
identifications in the involved application and
registration. See Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990), and Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815-16 (Fed. Cir. 1987).
Registrant's software is broadly identified as a
"database containing customer information." Applicant's
software "for managing sales and customer information"
appears to be a very similar program. While registrant's
identification does not state that its database includes
sales information, it is elementary that customers purchase
goods or services3 from sellers and there is no great leap
required to consider registrant's database as including
sales information; certainly, there is no reason to presume
that registrant's database excludes such information. In
any event, we need not engage in conjecture on this point,
3 We take judicial notice of the following definition: "customer
n. 1. a patron, buyer or shopper." The Random House College
Dictionary 329 (first ed., revised, 1982).
Ser. No. 75/585,377
4
for both the applicant and the Examining Attorney have
introduced information regarding registrant's database
software, retrieved from registrant's web site.4 The
summary of product features for registrant's database
proclaims "Clear Impact has your sales process covered from
initial customer contact to delivery of a final quote. …
[And] can generate sales reports and profit summaries…."
In short, even if the specific features of the respective
software products differ somewhat, they are very similar
and appear to be competitive products.
Also, in the absence of any restrictions on channels
of trade or classes of consumers, we must presume that
registrant's goods move in all normal channels of trade and
to all usual classes of consumers therefor, including the
industry applicant targets. See CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). Thus, for
our analysis, the goods are presumptively marketed through
the same channels of trade to the same classes of
consumers; that registrant's software may be marketed to
additional classes of consumers outside the industry
4 Both the applicant and the Examining Attorney introduced the
main or home page for registrant's product (www.clearimpact.com).
Applicant also introduced the related product updates page while
the Examining Attorney introduced the related product features
page. We have considered this evidence in its entirety to
discern the nature of the identified goods.
Ser. No. 75/585,377
5
applicant targets does not dispel any likelihood of
confusion among the common consumers.
Turning to the marks, we begin by noting that when
marks will appear on or in connection with virtually
identical goods or services, "the degree of similarity
[between the marks] necessary to support a conclusion of
likely confusion declines." Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992) (citations omitted).
Applicant argues that its mark is significantly
different than registrant's mark because the latter
includes the term CLEAR, while the former does not. Though
this means that the marks look different and, to the extent
they may be articulated, sound different, we agree with the
Examining Attorney that they possess virtually the same
connotation. The term CLEAR, as used by registrant, is
merely an adjective that does not change the essential
meaning of the term IMPACT.5
5 Neither applicant nor the Examining Attorney has discussed the
connotation of the term "impact," so we take judicial notice of a
dictionary definition to establish its meaning. We consider it,
in the context of the relevant goods, to mean "a concentrated
force producing change: an esp. forceful effect checking or
forcing change: an impelling or compelling effect." Webster's
Third New International Dictionary 1131 (1993).
The Examining Attorney, in her brief, asked that we take
judicial notice of a definition of "clear" from an on-line
dictionary, and attached a reprint of the definition to her
brief. This is a manifestly untimely submission of such
Ser. No. 75/585,377
6
Applicant argues that there is no absolute rule that a
likelihood of confusion must be found when "a junior user
has a mark that contains in part the whole of another's
mark." The point of the argument is not at all clear and
the cases on which applicant relies are not apposite.6 Each
of those cases involved a situation wherein a registrant
had a one-word mark and a subsequent applicant sought
registration of a two-word mark that incorporated the
registered term. We are faced with exactly the opposite
situation. Applicant seeks to register registrant's mark,
minus its modifying adjective. We do not doubt that there
are cases in which deletion of one word of a two-word mark
would yield a one-word mark with a different connotation
evidence. See In re Total Quality Group Inc., 51 USPQ2d 1474
(TTAB 1999). Nonetheless, definitions of "clear" are readily
available in printed dictionaries, and we take judicial notice of
the following meanings, which appear the most apt for
registrant's mark: "easily understood; without ambiguity…entirely
comprehensible; completely understood…." The Random House College
Dictionary 250 (first ed., revised, 1982). That prospective
purchasers would consider the term CLEAR in this manner stems
from applicant's promotion of its goods as having a "simple
design [which] gets you up and running right away" and a "focused
approach."
In short, the likely connotations of the involved marks are of
a concentrated force for changing the way one manages sales and
customer information (applicant's software), and an easily
understood concentrated force for maintaining a database of
customer information (registrant's software).
6 Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 USPQ 529
(CCPA 1970) and In re Merchandising Motivation, Inc., 184 USPQ
364 (TTAB 1974).
Ser. No. 75/585,377
7
than that of the two-word mark; the instant case, however,
does not present such a situation.
Applicant also argues that there are numerous
registrations for the term IMPACT for computer related
goods7 and that the term is very weak and entitled to only a
limited scope of protection. Applicant concludes that
consumers are accustomed to distinguishing between
different entities using this term as a mark based on
differences in their respective goods and that they will
likewise be able to distinguish between applicant and
7 Applicant attached, as exhibit B to its response to the
Examining Attorney's initial Office action, information reported
to have been retrieved from a "Trademarkscan" search. This
exhibit covers five registrations and two pending applications.
(One of the registrations subsequently was cancelled under
Section 8 of the Trademark Act; the two applications subsequently
resulted in issuance of registrations.)
A private search system printout is an improper method for
introducing third party registrations and applications into the
record. See In re Duofold Inc., 184 USPQ 638 (TTAB 1974); see
also Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992). The
Examining Attorney, however, did not object to the form of the
material and, in her brief, discussed the relevance of these
submissions. Accordingly, we have considered applicant's exhibit
B.
Applicant also attached, as exhibit E to its response to the
initial Office action, approximately 50 pages of additional
private search system information regarding IMPACT and IMPACT-
formative marks. (Applicant asserts, in its response to the
first Office action, that this material is from a search of
Patent and Trademark Office records, but this clearly is not
true.) Applicant's only reference to the material in this
exhibit is its statement that this material reveals "additional
marks approved for registration or applications for marks
consisting of the word IMPACT for a variety of other goods and
services." Not one of the marks in this exhibit was specifically
addressed by either applicant or the Examining Attorney. We
decline applicant's implied invitation that we explore this
exhibit for possibly relevant material.
Ser. No. 75/585,377
8
registrant in view of the differences in their respective
goods.
We agree with applicant that the various registrations
for IMPACT, and registrant's registration for CLEAR IMPACT,
appear able to coexist because of differences in the
respective goods. We agree with the Examining Attorney,
however, that applicant's goods and those of the cited
registrant do not differ in any significant manner, for
reasons already discussed herein. Moreover, even if we
consider the cited mark to be weak, the owner of a
registration for a weak mark is entitled to protection
against registration by a subsequent user of the same or
similar mark for the same or related goods. See Hollister
Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB
1976).
Under the circumstances of this case, we find that
consumers familiar with registrant's mark used on or in
connection with its software, when confronted with
applicant's mark used on or in connection with applicant's
software, will likely be confused as to source or
sponsorship. We rely, in this regard, not only on the
competitive nature of the involved goods and the
similarities of applicant's and the cited registrant's
respective product marks, but also on the registrant's
Ser. No. 75/585,377
9
trade name--Impact Development Inc.--used in conjunction
with its product mark.8 It would not be at all unusual for
a prospective purchaser of IMPACT software to assume that
it emanates from or has some connection with Impact
Development Inc., the source of CLEAR IMPACT software.
To the extent that, in view of the numerous third
party registrations for the term IMPACT, there is any doubt
about the merit of refusing registration to applicant, we
resolve this doubt in favor of registrant. Applicant, as
the newcomer, has the opportunity of avoiding confusion and
is obligated to do so. See TBC Corp. v. Holsa Inc., 126
F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997).
Decision: The refusal of registration is affirmed.
8 The final du Pont factor directs our consideration to "[a]ny
other established fact probative of the effect of use." E. I. du
Pont, supra, 177 USPQ at 567 (factor 13). The web site evidence
made of record by both applicant and the Examining Attorney
establishes registrant's use of this trade name.