Pure Networks, Inc.

Trademark Trial and Appeal Board

Sep 4, 2007

No. 78516218 (T.T.A.B. Sep. 4, 2007)

Mailed: September 4, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pure Networks, Inc.
________

Serial No. 78516218
_______

David A. Lowe of Black Lowe & Graham PLLC for Pure
Networks, Inc.

Evelyn Bradley, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Hairston, Grendel and Holtzman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Pure Networks, Inc. has filed an application to
register the mark shown below for “computer software for
connecting computer network users” in International Class
9; and “computer consultation, technical consultation in
the field of design and networking of personal computers,
technical support services, namely, troubleshooting of
computer hardware and software problems, computer network
design for others, computer programming for others, and
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Ser No. 78516218
2
computer services, namely creating indexes of information,
sites and other resources available on computer networks”
in International Class 42.1

The trademark examining attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant’s mark, when
used in connection with the identified goods and services,
so resembles the mark shown below, which is registered for
“computer services, namely, designing, creating and hosting
web sites for others” in International Class 42,2 as to be
likely to cause confusion, mistake or deception.

1 Application Serial No. 78516218, filed November 12, 2004,
alleging first use anywhere on January 15, 2004 and first use in
commerce on February 27, 2004.
2 Registration No. 2800679 issued December 30, 2003. This
registration also covers services in International Classes 35 and
36, but it is clear that the examining attorney is not asserting
a likelihood of confusion with the services in these classes.
Ser No. 78516218
3
Applicant has appealed. Applicant and the examining
attorney have filed briefs.
With respect to the marks, the examining attorney
argues that the designs are similar because applicant’s
mark consists of a “quadrilateral-like shape forming a
shaded stylized house” and registrant’s mark consists of a
“quadrilateral-like shape forming a stylized house.”
(Brief at 4). Further, the examining attorney argues that
“the respective goods and services are indeed similar and
are all computer-related.” (Brief at 6). In support of
the refusal, the examining attorney submitted copies of
seven use-based third-party registrations of marks that the
examining attorney maintains cover computer consultation
services, computer network design services, and the
services of designing and hosting websites. In addition,
the examining attorney made of record the webpages of five
companies. According to the examining attorney, the
webpages show “that computer software and computer services
such as designing and hosting websites of others, computer
consultation, and computer network design, are the kinds of
goods and services that are likely to emanate from a single
source.” (Brief at 6).
Applicant, in urging reversal of the refusal to
register, maintains that the marks are not similar, and
Ser No. 78516218
4
that it is not enough that the marks have an overall
quadrilateral-like shape, as argued by the examining
attorney. Further, applicant argues that there is no per
se rule that all computer goods and services are related
for purposes of likelihood of confusion, and that the
involved computer goods and services are not related and
are not offered in the same channels of trade.
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).
We consider first the similarity of the goods and
services. It is settled that the question of likelihood of
confusion must be determined based on an analysis of the
goods and/or services recited in applicant’s application
Ser No. 78516218
5
vis-à-vis the goods and/or services recited in the
registration, and not in light of what such goods and
services are asserted to actually be. See, e.g., Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1980); Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783
(Fed. Cir. 1992); and The Chicago Corp. v. North American
Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). Further, it is
a general rule that goods and/or services need not be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is enough that
goods and/or services are related in some manner or that
some circumstances surrounding their marketing are such
that they would be likely to be seen by the same persons
under circumstances which could give rise, because of the
marks used or intended to be used therewith, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of each parties’ goods
and/or services. In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991), and cases cited therein.
In considering the goods and services in this case, we
acknowledge that there is no per se rule governing
likelihood of confusion in cases involving computer goods
Ser No. 78516218
6
and services. See, e.g., Information Resources, Inc. v.
X*Press Information Services, 6 USPQ2d 1034 (TTAB 1985).
As noted, the examining attorney, in support of the
refusal, has introduced seven use-based third-party
registrations and the webpages of five companies. Although
applicant contends that the third-party registrations, in
particular, are of limited probative value, the Board has
stated that third-party registrations which individually
cover a number of different items (and/or services) and
which are based on use in commerce serve to suggest that
the listed goods and/or services are of a type that may
emanate from a single source. In re Albert Trostel & Sons
Co., 29 USPQ 1783 (TTAB 1993). The registrations submitted
by the examining attorney, with the pertinent services
indicated, are as follows: Registration No. 2344706,
COMMENTUM for computer consultation, design and development
of websites for others; Registration No. 2516096, CATCH THE
WORLD for computer consultation, design and development of
websites; Registration No. 2793740, GEONETRIC for creating,
managing and maintaining websites and computer network
design for others; Registration No. 2857318, STEINBRANDING
for computer network design for others and designing
Internet websites for others; Registration No. 2578749,
stylized letter “I” for designing and implementing websites
Ser No. 78516218
7
for others and computer consultation in the field of
network design; Registration No. 2596091, METHOD ENGINE for
designing and implementing websites for others and computer
consultation, namely, designing of computer networks;
Registration No. 2715836, THUNDERHAWK for computer network
design for others and creating and maintaining websites for
others; and Registration No. 2903221, ROOTMODE for computer
network design for others and creating, maintaining and
hosting websites for others.
The webpages are of the following companies with the
pertinent goods and services, as indicated: QA Computer
Consulting, computer advice and assistance including web
design and web hosting; InfiNet Computer Solutions,
computer consulting services, and web site design and
hosting; Miles Technologies, computer software, computer
networking and website designs; United Computing Resources,
network installation and website design and hosting; and GS
Communications, computer software, hardware, networking and
website design.
We find that Registration Nos. 2793740, 2857318,
2578749, 2596091, 2715836, and 2903221 and the webpages of
Miles Technologies, United Computing Resources, and GS
Communications suggest that, at the very least, applicant’s
Class 42 computer network design services and registrant’s
Ser No. 78516218
8
services of designing, creating and hosting web sites are
the types of services that emanate from a single source.
Thus, this evidence provides support of the relatedness of
applicant’s Class 42 services and registrant’s services.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 209
USPQ 986 (CCPA 1981) [likelihood of confusion may be found
if there is an overlap in any item in the involved
identifications of goods and/or services].
However, we are not persuaded by the evidence
introduced by the examining attorney that applicant’s Class
9 goods, i.e., computer software for connecting computer
network users, and registrant’s services of designing,
creating and hosting web sites are related goods and
services. None of the third-party registrations covers
these goods and services and only two of the company
webpages refer to computer software and web site design and
hosting. In short, this limited evidence is insufficient
to establish the relatedness of applicant’s Class 9
computer software for connecting computer network users and
registrant’s services of designing, creating and hosting
web sites.
Insofar as the channels of trade and classes of
purchasers are concerned, applicant argues that its
computer network design services are rendered in the
Ser No. 78516218
9
consumer and industrial electronic products fields whereas
registrant’s services of designing, creating and hosting
web sites are rendered in the real estate field. However,
neither applicant’s nor registrant’s identification is
limited as to channels of trade or classes of purchasers.
Thus, we must presume that applicant’s computer network
design services and registrant’s services of designing,
creating and hosting web sites of others move in all normal
channels of trade for services of these types and that they
are available to all potential customers. In view of the
relatedness of applicant’s computer network design services
and registrant’s services of designing, creating and
hosting web sites, the customers and channels of trade for
the respective services are consequently deemed to be the
same.
Applicant further asserts that the conditions under
which and buyers to whom sales of the services at issue are
made is a factor which mitigates any likelihood of
confusion. According to applicant, the target purchasers
of the respective services are sophisticated and
discriminating purchasers. Apart from the fact applicant
has offered no support for its contention, we note that
individual consumers may have need for computer network
design services. Indeed, applicant has stated that its
Ser No. 78516218
10
computer network design services are offered to consumers,
and applicant’s specimen webpage indicates that such
services are for the “home networking market.” Moreover,
insofar as registrant’s services of designing, creating and
hosting web sites are concerned, individual consumers may
also avail themselves of these types of services. We have
no basis on which to conclude that consumers would exercise
anything more than ordinary care when selecting the
respective services. Nonetheless, even assuming that
purchasers of the respective services are sophisticated and
discriminating purchasers, the fact that purchasers are
sophisticated and knowledgeable in a particular field does
not necessarily mean that they are sophisticated or
knowledgeable in the field of trademarks or immune from
source confusion. See, e.g., Wincharger Corp. v. Rinco,
Inc., 297 F.2d 261, 132 USPQ 289 (CCPA 1962); and In re
Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999).
In view of the foregoing, we find that if applicant’s
computer network design services and registrant’s services
of designing, creating and hosting web sites are rendered
under the same or similar marks, confusion as to the source
of sponsorship of such services would be likely to occur.
Turning then to a consideration of the marks, inasmuch
as the respective marks are design marks which cannot be
Ser No. 78516218
11
pronounced, the issue of likelihood of confusion must be
decided primarily on the basis of the overall visual
similarity of the marks. This essentially comes down to an
“eyeball test” as explained at 4 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §23.25 (4th
ed. 2006) as follows (footnote omitted):
Because a picture is worth a thousand words,
there is little in the way of guidelines to
determine that degree of visual similarity which
will cause a likelihood of confusion of buyers.
Obviously, for picture and design marks (as
opposed to word marks), similarity of appearance
is controlling. There is no point in launching
into a long analysis of the judicial pros and
cons regarding visual similarity of marks.
Regarding visual similarity, all one can say is
‘I know it when I see it.’

Thus, the similarity of design marks is determined by
considering the overall impression created by the marks as
a whole rather than by simply comparing individual features
of the marks. Applicant’s and registrant’s design marks
are reproduced below:
Applicant’s mark Registrant’s mark

Ser No. 78516218
12
In comparing applicant’s mark with registrant’s mark
in their entireties, we are of the view that the overall
commercial impression created by applicant’s mark when
compared with registrant’s mark is very similar. Both
marks consist of a pentagonal or house-like design
connected to and surrounded by a quadrilateral-like design.
While there are specific differences in the marks
(e.g., applicant’s mark includes shading within the
pentagonal or house-like design and a pronounced roof
design), these differences are not likely to be recalled by
purchasers seeing the marks at different times. Under
actual marketing conditions, consumers do not have the
luxury of side-by-side comparison of the marks, and
further, we must consider the recollection of the average
purchaser, who normally retains a general, rather than a
specific, impression of trademarks encountered. Thus, the
purchaser’s fallibility of memory over a period of time
must also be kept in mind. See Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573
(CCPA 1973).
Viewing the involved marks in this light, it is
obvious that there are marked resemblances in the overall
design format and commercial impression thereof. In
reaching our decision herein, we have not overlooked
Ser No. 78516218
13
applicant’s contention that this case is similar to Red
Carpet Corp. v. Johnstown American Enterprises Inc., 7
USPQ2d 1404 (TTAB 1988) where the Board held that the use
of a pentagonal design mark for real estate property
management services was not likely to cause confusion with
another pentagonal design mark for real estate brokerage
services. The Board found that the respective pentagonal
design marks created different visual impressions, and that
pentagonal design marks, which may be perceived as a design
of a house, are suggestive of services in the real estate
field.
The present case is distinguishable because
applicant’s and registrant’s marks create visually similar
impressions and are not simply pentagonal designs, and
there is no evidence to indicate that pentagonal designs
are suggestive of goods and/or services in the computer
field.
Accordingly, we conclude that purchasers and
prospective customers familiar with registrant’s design
mark for computer services, namely, designing, creating and
hosting web sites for others, would be likely to believe,
upon encountering applicant’s design mark for computer
network design services, that such services emanate from or
Ser No. 78516218
14
are otherwise associated with or sponsored by the same
source.
However, we are not persuaded by the record in this
case that confusion is likely with respect to registrant’s
services and applicant’s computer software for connecting
computer network users.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed as to the services in
International Class 42 and reversed as to the goods in
International Class 9.