Sequent Computer Systems, Inc.

Trademark Trial and Appeal Board

Feb 11, 2003

No. 92029387 (T.T.A.B. Feb. 11, 2003)

Paper No.31
ewh
Mailed: February 11, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Numa, Inc.
v.
Sequent Computer Systems, Inc.
_____
Consolidated Cancellation No. 29,387
and Opposition No. 116,011
_____
Donald S. Holland of Holland & Bonzagni for Numa, Inc.
Ethan Horwitz and Kandis M. Koustenis of Goodwin Procter LLP
for Sequent Computer Systems, Inc.
_____
Before Simms, Seeherman and Hanak, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
On June 4, 1999 Numa, Inc. (Numa) filed a petition
seeking to cancel Registration No. 2,234,568 owned by
Sequent Computer Systems, Inc. (Sequent). This registration
is for the mark NUMA-Q in typed drawing form and it covers
“computer hardware, namely multiple interconnected
processors.” The registration issued on March 23, 1999.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Cancellation No. 29,387 & Opposition No. 116,011
2
In its cancellation petition, Numa alleged ownership of
Registration No. 2,208,447. This registration is for the
mark NUMA in typed drawing form for “installation,
maintenance and repair of computer hardware” and “computer
programming for others in the field of medical imaging.”
This registration issued on December 8, 1998, over three
months before Sequent’s registration for NUMA-Q issued on
March 23, 1999. As grounds for cancellation, Numa alleged
that the contemporaneous use of NUMA for Numa’s services and
NUMA-Q for Sequent’s goods is likely to cause confusion,
deception or mistake. While Numa did not make specific
reference to Section 2(d) of the Trademark Act, it is clear
that this is the legal basis for Numa’s petition for
cancellation. In paragraph 2 of its cancellation petition,
Numa stated that it attached two copies of its registration
for NUMA “showing status and title.” However, in point of
fact, what Numa attached to its cancellation petition were
photocopies of its original registration certificate for
NUMA.
In response, Sequent denied the pertinent allegations
of the cancellation petition, and in particular, Sequent
denied that there existed a likelihood of confusion. In
addition, Sequent filed a counterclaim seeking to cancel
Numa’s registration for NUMA on the basis that NUMA is a
well known acronym for Non-Uniform Memory Access, and
Cancellation No. 29,387 & Opposition No. 116,011
3
therefore “is generic for the services identified in
[Numa’s] registration.” (Answer and Counterclaim paragraphs
11-12).
On November 9, 1999 Numa filed an opposition against
Sequent’s application Serial No. 75/478,272 for the mark
NUMACENTER depicted in typed drawing form. The goods of
this application are “computer hardware, namely, multiple
interconnected processors, and computer software for use
therewith to facilitate the interconnection and
interoperation of such hardware, and instruction manuals
distributed as a unit therewith.” Numa alleged that the
mark NUMACENTER was confusingly similar to Numa’s registered
mark NUMA and to Numa’s unregistered mark NUMASTATION which
Numa alleged that it had used on computer hardware and
software since at least as early as December 17, 1997. In
this regard, it should be noted that Sequent’s application
to register NUMACENTER is an intent-to-use application which
was filed on May 1, 1998, over four months after Numa’s
claimed first use date of December 17, 1997 of its
unregistered mark NUMASTATION.
In response, Sequent filed an answer which denied the
pertinent allegations of the notice of opposition, and a
counterclaim seeking to cancel Numa’s federal registration
of NUMA on the basis that it is generic for the reasons just
discussed above.
Cancellation No. 29,387 & Opposition No. 116,011
4
In response, Numa filed an answer to the counterclaim
denying the pertinent allegations.
This Board’s files do not reflect that Numa filed an
answer to Sequent’s counterclaim in the cancellation
proceeding. However, the parties jointly moved to
consolidate the two proceedings, and the Board granted this
motion to consolidate. Because Sequent’s counterclaim in
the cancellation is identical to its counterclaim in the
opposition, and because Numa denied the pertinent
allegations of the counterclaim in the opposition, we find
that Numa has denied the counterclaim in the cancellation.
In this regard, we note that Sequent has never argued that
Numa failed to deny Sequent’s counterclaim in the
cancellation.
Both parties filed briefs. Neither party requested a
hearing.
Before discussing the merits of this matter, we must
deal with certain evidentiary objections raised by Sequent.
First, Sequent objects to the fact that Numa cited in its
brief an unpublished Board decision. Sequent’s objection is
well taken, and this Board has not considered this
unpublished decision. General Mills, Inc. v. Health Valley
Foods, 24 USPQ2d 1270, 1275 n.9 (TTAB 1992).
Second, Sequent alleges that Numa never properly made
of record its registration for NUMA, namely, Registration
Cancellation No. 29,387 & Opposition No. 116,011
5
No. 2,208,447. However, pursuant to Trademark Rule 2.122(b)
Numa’s Registration No. 2,208,447 was automatically made of
record in both the cancellation and opposition proceedings
when Sequent filed its counterclaims seeking to cancel this
registration. Trademark Rule 2.122(b) reads, in pertinent
part for our purposes, as follows: “The file of each …
registration … against which a petition or counterclaim for
cancellation is filed forms part of the record of the
proceeding without any action by the parties and reference
may be made to the file for any relevant and competent
purpose.” Sequent makes the argument that while the file of
NUMA Registration No. 2,208,447 is properly part of the
record, the registration itself is not. Sequent cites
absolutely no authority for this unique interpretation of
Trademark Rule 2.122(b). The file of the NUMA Registration
No. 2,208,447 contains a copy of the registration itself.
Accordingly, Registration No. 2,208,447 for NUMA is properly
of record.
Third, Sequent objects to much of the rebuttal
testimony of Lawrence W. Smith, Numa’s president. By way of
background, neither party conducted any discovery. During
its opening testimony period, Numa made of record no
evidence. During its testimony period, Sequent made of
record the deposition (with exhibits) of Michael J. Flynn, a
retired professor from Stanford University who is an expert
Cancellation No. 29,387 & Opposition No. 116,011
6
in the field of computer design, computer organization and
computer architecture. Sequent also made of record by means
of notices of reliance excerpts from various publications
and dictionaries where the term NUMA appeared in an effort
to establish that this term is generic.
Sequent does not object to that portion of the rebuttal
testimony of Mr. Smith (Numa’s president) which deals with
whether or not NUMA is generic for the services set forth in
Numa’s Registration No. 2,208,447. Rather, Sequent objects
to that portion of Mr. Smith’s testimony which deals with
the actual uses of Numa’s registered mark NUMA, as well as
exhibits relating to that testimony, such as the “history
notebook.”
Sequent’s objection is well taken with regard to Mr.
Smith’s testimony concerning when Numa first used its NUMA
mark and the extent of Numa’s use of its NUMA mark.
However, with regard to Mr. Smith’s testimony as to who are
the users of the services set forth in Numa’s Registration
No. 2,208,447, Sequent’s objection is not well taken. In
determining the genericness of a term, it is fundamental
“that whether a term is entitled to trademark [or service
mark] status turns on how the mark is understood by the
purchasing public.” Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551, 1553 (Fed. Cir. 1991)(emphasis added)
and cases cited therein. Dr. Flynn testified that amongst
Cancellation No. 29,387 & Opposition No. 116,011
7
those individuals knowledgeable about the workings of
computers, NUMA was a well recognized acronym for Non-
Uniform Memory Access. In response, Mr. Smith testified
that the purchasers of Numa’s services under its registered
mark NUMA were not knowledgeable about computers, but rather
were technologists and physicians in the field of nuclear
medicine.
Fourth, Sequent has objected to Numa’s reliance on its
purported rights in its unregistered mark NUMASTATION.
While Numa did not plead rights in this unregistered mark in
its cancellation petition, Numa did plead rights in this
unregistered mark in its notice of opposition. Sequent
contends that Numa failed to introduce any evidence with
regard to its purported unregistered mark NUMASTATION.
Sequent is not correct on this latter point. In his
rebuttal testimony, Mr. Smith did discuss Numa’s
unregistered mark NUMASTATION. (Smith deposition page 21).
However, this was entirely improper rebuttal testimony. If
Numa wished to establish common law rights in its mark
NUMASTATION, it should have done so in its opening
testimony. In short, we have given no consideration
whatsoever to Numa’s purported mark NUMASTATION.
Fifth, in its brief, Numa makes reference to the fact
that it sought a second registration of NUMA for “computer
hardware and software sold as a unit for medical imaging.”
Cancellation No. 29,387 & Opposition No. 116,011
8
(Numa’s brief page 4). Because Numa offered no testimony
concerning this application during its opening testimony
period, we have given absolutely no consideration to this
application.
We turn now to the merits of this matter. We will
consider first Sequent’s duplicate counterclaims to cancel
Numa’s Registration No. 2,208,447 for the mark NUMA on the
basis that it is generic for the services set forth therein,
namely, “installation, maintenance and repair of computer
hardware” and “computer programming for others in the field
of medical imaging.” Obviously, if Sequent’s counterclaims
are successful, then Numa’s cancellation petition and
opposition must fail because the only rights which Numa has
established in this proceeding are through its Registration
No. 2,208,447. As just noted, Numa has established no
common law rights in NUMA, NUMASTATION or any other mark.
At the outset, we note that “a proper genericness
inquiry focuses on the description of services set forth in
the certificate of registration.” Magic Wand, 19 USPQ2d at
1552 and cases cited therein. For example, the word “apple”
when applied to a popular fruit would be generic, but it
would not be generic when applied to computers. Of course,
it need hardly be said that Sequent bears the burden of
proving that NUMA is generic for the services set forth in
Cancellation No. 29,387 & Opposition No. 116,011
9
Registration No. 2,208,447, a fact which Sequent itself
acknowledges at page 5 of its brief.
To cut to the quick, we find that the testimony of
Sequent’s own expert clearly demonstrates that NUMA is not
generic for the “installation, maintenance and repair of
computer hardware.” Indeed, Dr. Flynn did not even testify
that NUMA is descriptive for the “installation, maintenance
and repair of computer hardware.”
At various times, Dr. Flynn defined the acronym NUMA.
For example, when asked what the meaning of the term NUMA
was with respect to computers, Dr. Flynn replied as follows:
“That NUMA is an acronym for Non-Uniform Memory Access, and
that the term is used to describe a shared memory
multiprocessor computer architecture or computer
organization in which the memory access is determined by –
the memory access time is determined by the location of the
physical memory addressed.” (Flynn deposition pages 55-56).
This Board has consulted the Microsoft Computer Dictionary
(5th ed. 2002) and that dictionary defines NUMA in
essentially the same manner as did Dr. Flynn, namely:
“Acronym for Non-Uniform Memory Access. A multiprocessing
architecture that manages memory according to the distance
from the processor. Banks of memory at various distances
require different amounts of access time, with local memory
accessed faster than remote memory.” Thus, the acronym NUMA
Cancellation No. 29,387 & Opposition No. 116,011
10
is arguably generic when applied to a multiprocessor
computer architecture in which memory access time is
determined by distance or location.
However, that does not mean that NUMA is generic for
the services set forth in NUMA Registration No. 2,208,447.
At pages 69 and 70 of his deposition, Dr. Flynn was asked on
cross-examination whether NUMA stood for the installation of
computer hardware. Dr. Flynn answered in the negative. Dr.
Flynn was asked whether NUMA denoted the maintenance of
computer hardware. Again, Dr. Flynn answered in the
negative. Dr. Flynn was asked whether NUMA stood for the
repair of computer hardware. Again, Dr. Flynn answered in
the negative. Finally, Dr. Flynn was asked whether the term
NUMA denotes or identifies the combination of the
installation, maintenance and repair of computer hardware.
Once again, Dr. Flynn answered in the negative.
A few minutes later in his deposition, Dr. Flynn was
asked a slightly varied form of the foregoing question,
namely: “Does NUMA designate the following class of
services, installation, maintenance, and repair of computer
hardware, in your opinion as an expert?” Dr. Flynn
responded in the negative. Thereafter, Dr. Flynn was asked
the following question: “In your opinion as an expert, does
the phrase NUMA describe any characteristic of the
following, installation, maintenance and repair of computer
Cancellation No. 29,387 & Opposition No. 116,011
11
hardware?” Dr. Flynn replied in the negative. (Flynn
deposition page 73).
Based upon the testimony of Dr. Flynn, an expert
selected by Sequent, we find that NUMA is not a generic term
for the “installation, maintenance and repair of computer
hardware.” For reasons which we do not understand, Numa’s
counsel never asked the same series of questions of Dr.
Flynn with regard to the second set of services in NUMA
Registration No. 2,208,447, namely “computer programming for
others in the field of medical imaging.” However, as
Sequent readily acknowledges at page 5 of its brief, it was
incumbent upon Sequent to prove that NUMA was generic for
“computer programming for others in the field of medical
imaging.” To be quite blunt, Sequent has offered absolutely
no proof that NUMA is generic (or even descriptive) for this
latter class of services. Accordingly, Sequent’s
counterclaims are dismissed.
Before leaving the issue of Sequent’s genericness
counterclaims, we wish to clarify one point. Earlier in
this decision we stated that we would consider that portion
of Mr. Smith’s testimony which described the type of
purchasers of Numa’s services as set forth in its
Registration No. 2,208,447. We did so because determining
“whether a term is entitled to trademark [or service mark]
status turns on how the mark is understood by the purchasing
Cancellation No. 29,387 & Opposition No. 116,011
12
public.” Magic Wand, 19 USPQ2d at 1553. With regard to the
first class of services in Registration No. 2,208,447 –
installation, maintenance and repair of computer hardware –
Sequent may argue in the future that because these services
were not restricted to the field of medical imaging,
therefore the relevant purchasers include not only
technologists and physicians in the field of nuclear
medicine (as Numa argues), but also computer experts (as
Sequent argues). If Sequent were to make such an argument,
it would be with merit. In other words, the relevant
purchasing public would include computer experts. However,
based upon the testimony of Dr. Flynn, we find that even
amongst computer experts, the term NUMA is not generic for
the “installation, maintenance and repair of computer
hardware.”
We turn now to a consideration of Numa’s petition to
cancel Sequent’s Registration No. 2,234,568 for the mark
NUMA-Q. As previously noted, Numa’s cancellation petition
is premised on Section 2(d) of the Trademark Act on the
basis that the contemporaneous use of Sequent’s mark NUMA-Q
and Numa’s mark NUMA is likely to cause confusion. However,
before we reach the issue of likelihood of confusion, it is
incumbent upon Numa to prove the first prong of any Section
2(d) claim, namely, priority of use.
Cancellation No. 29,387 & Opposition No. 116,011
13
In this case, petitioner Numa has not properly
established that it first used its mark NUMA on October 22,
1993 as claimed in its Registration No. 2,208,447. For that
matter, Numa has not properly established any first use date
for its mark NUMA. While Mr. Smith (Numa’s president)
testified that Numa first used its mark NUMA in 1993, such
testimony was given during Numa’s rebuttal testimony period.
Such testimony should have been given during Numa’s opening
testimony period. Because Numa made of record no evidence
during its opening testimony period, it has not properly
established any first use date for its registered mark NUMA.
By the same token, Sequent has not established any
first use date for its registered mark NUMA-Q. The only
evidence which Sequent made of record dealt with the
purported genericness of the mark NUMA.
Of course, Numa and Sequent may rely upon the filing
dates of the applications which matured into their
respective registrations for purposes of priority. See
Section 7(c) of the Trademark Act. As previously noted, the
NUMA registration issued over three months prior to the
issuance of the NUMA-Q registration. However, Sequent’s
NUMA-Q registration has an application filing date of
December 15, 1995. The NUMA registration has an application
filing date of July 14, 1997. Hence, priority rests with
Sequent. Accordingly, Numa’s petition to cancel Sequent’s
Cancellation No. 29,387 & Opposition No. 116,011
14
Registration No. 2,234,568 for the mark NUMA-Q must fail
because Numa has simply failed to prove the first prong of
any Section 2(d) claim, namely, priority of use.
Finally, we turn to Numa’s opposition to Sequent’s
application Serial No. 75/478,272 to register the mark
NUMACENTER. Numa’s opposition is premised on Section 2(d)
of the Trademark Act, and it is based solely on the rights
which Numa derives from its Registration No. 2,208,447 for
the mark NUMA. As previously noted, Mr. Smith’s testimony
about Numa’s rights in its unregistered mark NUMASTATION is
improper because it was taken during the rebuttal testimony
period.
Obviously, in the opposition Sequent lacks a
registration for NUMACENTER. Accordingly, Numa may rely
upon its Registration No. 2,208,447 for the mark NUMA on
which to base its opposition. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
Cancellation No. 29,387 & Opposition No. 116,011
15
differences in the essential characteristics of the goods
[or services] and differences in the marks.”).
Considering first the goods and services, we note that
the NUMA registration is a multiple class registration
encompassing the “installation, maintenance and repair of
computer hardware” (Class 37) and “computer programming for
others in the field of medical imaging” (Class 42).
Obviously, the words “installation, maintenance and repair
of computer hardware” contain no limitation whatsoever as to
the type of computer hardware, and therefore must be
interpreted to include computer hardware of all types. This
would include the particular type of computer hardware set
forth in the NUMACENTER application, that is to say,
“computer hardware, namely, multiple interconnected
processors.” Accordingly, in our likelihood of confusion
analysis we will direct our consideration to whether there
exists a likelihood of confusion resulting from the
contemporaneous use of NUMA for the “installation,
maintenance and repair of [all types of] of computer
hardware” and NUMACENTER for “computer hardware, namely,
multiple interconnected processors.” Cf. Tuxedo Monopoly,
Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209
USPQ 986 (CCPA 1981).
Considering next the marks, Sequent’s mark NUMACENTER
encompasses Numa’s NUMA mark in its entirety and then adds
Cancellation No. 29,387 & Opposition No. 116,011
16
the word CENTER to it. Two of the definitions of the word
“center” are as follows: “a store or establishment devoted
to a particular subject or hobby” and a “shopping center.”
Random House Webster’s Dictionary (2001). In our judgment,
a consumer familiar with the mark NUMA for the installation,
maintenance and repair of all types of computer hardware
would, upon seeing the mark NUMACENTER for a particular type
of computer hardware, simply assume that NUMACENTER
indicates the store to which one goes for NUMA installation,
maintenance and repair services. Moreover, even if a
consumer did not understand CENTER to mean store, we feel
that he or she would nevertheless believe that Sequent’s
NUMACENTER computer hardware and Numa’s NUMA computer
hardware maintenance, installation and repair services
emanated from the same source, or were sponsored or approved
by the same source, because the CENTER portion of Sequent’s
mark is not sufficiently distinguishing in nature.
Finally, both the NUMA registration and the NUMACENTER
application depict the marks in typed drawing form. This
means that Sequent’s “application [for the mark NUMACENTER]
is not limited to the mark depicted in any special form,”
and hence we are obligated “to visualize what other forms
the mark might appear in.” Phillips Petroleum Co. v. C.J.
Webb Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). See
also INB National Bank v. Metrohost Inc., 22 USPQ2d 1585,
Cancellation No. 29,387 & Opposition No. 116,011
17
1588 (TTAB 1992). Sequent could depict its mark NUMACENTER
such that the NUMA portion was emphasized, thus making the
mark NUMACENTER even more similar to Numa’s registered mark
NUMA. Accordingly, we find that there exists a likelihood
of confusion if the marks NUMA and NUMACENTER were to be
used for at least certain of their respective services and
goods. Of course, to the extent that there are doubts on
the issue of likelihood of confusion, we are obligated to
resolve those doubts in favor of Numa. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1707 (Fed. Cir. 1992); In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993).
Decision: Sequent’s counterclaims seeking to cancel
the NUMA registration are dismissed. Numa’s petition to
cancel the NUMA-Q registration is denied. Numa’s opposition
to Sequent’s application to register NUMACENTER is
sustained. In short, Numa retains its registration of NUMA
and Sequent retains its registration of NUMA-Q. Sequent
does not obtain a registration for NUMACENTER.
Cancellation No. 29,387 & Opposition No. 116,011
18
Seeherman, Administrative Trademark Judge, concurring in
part and dissenting in part:
I respectfully dissent from that part of the opinion
sustaining Numa, Inc.’s (hereafter plaintiff) opposition to
the application of Sequent Computer Systems, Inc. (hereafter
defendant) to register NUMACENTER as a trademark for
“computer hardware, namely, multiple interconnected
processors, and computer software for use therewith to
facilitate the interconnection and interoperation of such
hardware, and instruction manuals distributed as a unit
therewith.”
As the majority has pointed out, plaintiff has not made
any evidence of record in support of its opposition to the
registration of defendant’s NUMACENTER mark. Plaintiff’s
registration for NUMA is of record, though, as a result of
defendant’s counterclaim to cancel that registration. Thus,
the only evidence as to the relatedness of plaintiff’s
services and defendant’s goods is the identification of
services which appears in plaintiff’s registration.
Plaintiff’s services are identified as “installation,
maintenance and repair of computer hardware” in Class 37.1
Under settled principles of trademark law, and as the
1 As the majority notes, this registration also covers “computer
programming for others in the field of medical imaging” in Class
42, but since the Class 37 services are more broadly defined, I
agree with the majority that the focus of the discussion of the
issue of likelihood of confusion should be directed to them.
Cancellation No. 29,387 & Opposition No. 116,011
19
majority points out, these services of installation,
maintenance and repair of computer hardware is broad enough
to encompass the installation, maintenance and repair of the
computer hardware identified in defendant’s application,
namely, multiple interconnected processors.
Multiple interconnected processors are specialized
computer equipment. They are not the same as the personal
computers which members of the general public would purchase
for home use. Rather, they are sophisticated equipment
which would be used for complex tasks in which multiple
processors would be required. Because of the very nature of
the goods, the consumers would generally be large
corporations or government agencies, and the people making
the purchasing decisions would be computer professionals who
would be knowledgeable about such equipment.
As shown in the majority opinion, NUMA is an acronym
for a computer architecture known as “non-uniform memory
access.”2 The evidence submitted by defendant shows that
NUMA (acronym) architecture is a feature of applicant’s
identified goods. For example, the “what’s? com” listing
for NUMA provides the following explanation:
NUMA (non-uniform memory access) is a
method of configuring a cluster of
2 Because in our opinions we normally depict both trademarks and
acronyms in all capital letters, I will indicate in a
parenthetical following the term whether I am referring to NUMA
as the acronym or the trademark.
Cancellation No. 29,387 & Opposition No. 116,011
20
microprocessors in a multiprocessing
system so that they can share memory
locally, improving performance and the
ability of the system to be expanded.
... NUMA adds an intermediate level of
memory shared among a few
microprocessors so that all data
accesses don’t have to travel on the
main bus.
NUMA can be thought of as a “cluster in
a box.” The cluster typically consists
of four microprocessors (for example,
four Pentium microprocessors)
interconnected on a local bus (for
example, a Peripheral Component
Interconnect bus) to a shared memory....
http://whatis/techtarget.com
See, also, the following definition: “Non-Uniform Memory
Access: (NUMA) A memory architecture, used in
multiprocessors, where the access time depends on the memory
location. A processor can access its own local memory
faster than non-local memory (memory which is local to
another processor shared between processors).” “FOLDOC Free
On-Line Dictionary of Computing,” foldoc.doc.ic.ac.uk
Applicant has also submitted a literal stack of
articles taken from various publications which describe NUMA
architecture as a feature of multiple interconnected
processors, including the following:
NUMA allows applications designed for
the shared memory model of SMP machines
to run on internal clusters of unlimited
processors, creating a virtual MPP
(massively parallel-processing) machine.
“PC Week,” October 16, 1995
NUMA is a more scalable memory-sharing
system. With SMP, it’s difficult to
Cancellation No. 29,387 & Opposition No. 116,011
21
hook together a large number of
processors because they must all access
all memory at the same speed over short
bus lengths, a process that can actually
lead to performance slowdowns.
NUMA overcomes this by connecting large
groups of processors and memory at
varying speeds over greater distances to
enable a faster, more-powerful computing
platform.
“Informationweek,” November 29, 1999
IBM’s acquisition of Sequent could prove
complementary for the company, because
the latter has concentrated heavily on
the non-uniform memory architecture
(Numa) approach. This typically relies
on running applications with multiple
processors across a high-speed backplane
in a single box. It is differentiated
from symmetric multiprocessing (SMP)
servers because it assigns a separate
piece of memory to each processor in the
server, reducing bus overload.
“Computer Weekly,” October 28, 1999
As a result, when the relevant class of consumers views
the mark NUMACENTER in connection with applicant’s goods,
they will perceive the element NUMA as a descriptive term
for a characteristic of the goods, rather than seeing it as
a reference to plaintiff’s NUMA trademark. Moreover,
although in other contexts, as the majority states, the word
CENTER may not be a highly distinguishing feature of a mark,
in the context of applicant’s goods the term CENTER would
either be perceived as arbitrary and the dominant element of
NUMACENTER, or it would be seen, when used in combination
with NUMA, as reinforcing the acronym significance of NUMA.
For example, consumers may view NUMACENTER as suggesting
Cancellation No. 29,387 & Opposition No. 116,011
22
that the non-uniform memory access architecture is a central
feature (center) of the multiple processors.
In the context of these goods, I am simply not
persuaded by the majority’s statement that, because two
meanings of “center” are a store and a shopping center,
consumers would assume that NUMACENTER, when used on
multiple interconnected processors, indicates the store to
which one goes for NUMA (trademark) installation,
maintenance and repair services. There is no indication in
this record that either defendant’s goods or the service of
installation, maintenance or repair of such goods would be
offered through a store. Again, multiple interconnected
processors are highly sophisticated equipment, and there is
no evidence that they would be offered through stores in the
way that a general consumer item such as a home computer
would. Because of the highly sophisticated nature of the
identified goods, I do not believe that we can assume,
without evidence, that one would go to a store to arrange
for their installation or that one would take them to a
store to have them maintained or repaired. Accordingly, I
do not think that purchasers will view the term CENTER in
defendant’s mark as indicating plaintiff’s store.
As noted above, the majority has found plaintiff’s
services to be related to defendant’s goods by assuming that
plaintiff’s services would encompass the installation,
Cancellation No. 29,387 & Opposition No. 116,011
23
maintenance and repair of multiple interconnected
processors, a proposition with which I agree. However, if
the services are viewed in this way, plaintiff’s mark NUMA
obviously has a highly suggestive significance, as it refers
to a characteristic of the multiple interconnected
processors, i.e., processors having a NUMA (acronym)
architecture.3 The strength of plaintiff’s mark must be
considered in determining likelihood of confusion. Because
of the highly suggestive nature of the mark as it applies to
the services as defined in this manner, the mark NUMA is
entitled to a very limited scope of protection. In my view,
the differences in the marks, i.e., the additional element
CENTER in defendant’s mark, is sufficient in this case to
distinguish them.
It must also be remembered that plaintiff’s services as
encompassed by its identification, i.e., the installation,
maintenance and repair of multiple interconnected
processors, and defendant’s multiple interconnected
processors, will be purchased by highly sophisticated and
knowledgeable people who will exercise great care in buying
the processors or hiring a company to install, maintain and
3 Because we have found that defendant did not prove in its
counterclaim that NUMA is a generic term for plaintiff’s
services, and because the ground of mere descriptiveness under
Section 2(e)(1) was not pleaded, the registration must be deemed
valid under the presumptions of Section 7(b) of the Act.
Therefore it must be viewed as being distinctive, albeit highly
suggestive.
Cancellation No. 29,387 & Opposition No. 116,011
24
repair them. These purchasers are not likely to simply
assume that the goods and services emanate from or are
sponsored by the same source solely because both marks have
the common element NUMA when this element is a recognized
acronym for a feature of the goods.
Given these considerations, as discussed above, I would
find that plaintiff has not met its burden in proving that
defendant’s use of NUMACENTER is likely to cause confusion
with plaintiff’s registered mark NUMA. Accordingly, I would
dismiss the opposition.