Soft Machines, Inc.Download PDFTrademark Trial and Appeal BoardApr 16, 2013No. 85109097 (T.T.A.B. Apr. 16, 2013) Copy Citation Mailed: 4/16/2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Soft Machines, Inc. ________ Serial No. 85109097 _______ Wood, Phillips, Katz, Clark & Mortimer for Soft Machines, Inc. Allison P. Schrody, Trademark Examining Attorney, Law Office 115 (John Lincoski, Managing Attorney). _______ Before Quinn, Cataldo and Greenbaum, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Soft Machines, Inc. filed, on August 17, 2010, an intent- to-use application, under Section 1(b) of the Trademark Act, 15 U.S.C. 1051(b), to register the mark SMWARE (in standard characters) for “semiconductor devices” in International Class 9. 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, when applied to applicant’s goods, so resembles the previously registered mark shown below THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 85109097 2 for, inter alia, “semiconductor memory devices, namely, integrated circuits, electronic circuit cards, blank memory card cartridges; semiconductor devices, namely, flash memory cards, memory card cartridges, adapters, converters, memory card controllers, media players, memory card readers, storage modules in the nature of blank memory cards, and computer peripherals; portable audio and video players and recorders which use semiconductor devices as recording media; computer operating programs for semiconductor devices” in International Class 9.1 When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs. Applicant argues that the marks are dissimilar because “SM is only two of the six letters of applicant’s word mark, which does not include any design element.” (Brief, p. 5). Applicant is entirely silent on the similarity between the goods. The examining attorney maintains that the goods are essentially identical, and that the marks are similar inasmuch as both marks are dominated by the letters “SM.” In support of the refusal the examining attorney submitted copies of several 1 Registration No. 3941114, issued April 5, 2011. The mark “consists of a memory card with the letters ‘SM’ and a card slot.” The pictorial representation of a memory card is disclaimed. Ser. No. 85109097 3 third-party registrations of marks incorporating the term “WARE,” all for goods in Class 9. 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). We first turn to consider the du Pont factor regarding the similarity/dissimilarity between the goods. When comparing the goods, the respective identifications in the application and the cited registration control the analysis. In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). As indicated above, applicant does not dispute the examining attorney’s contention that the goods are overlapping. Indeed, both identifications include “semiconductor devices.” As the examining attorney points out, applicant’s broadly worded identification Ser. No. 85109097 4 encompasses registrant’s more narrowly identified types of semiconductor devices. Thus, for purposes of our likelihood of confusion analysis, the goods are legally identical. Because the goods identified in the application and the cited registration are in-part identical, we must presume that the channels of trade and classes of purchasers are the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade.”); and In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”). Further, we note that there are no limitations in either applicant’s or registrant’s identification of goods. Thus, given that the identifications are legally identical to the extent that both include semiconductor devices, the respective goods are presumed to move through the same trade channels and are presumed to be purchased by the same classes of purchasers. Ser. No. 85109097 5 The legal identity between the goods, trade channels and classes of purchasers are factors that weigh heavily in favor of a finding of likelihood of confusion. We next turn to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). Moreover, in comparing the marks, we are mindful that where, as here, the goods are legally identical in part, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); and Schering-Plough HealthCare Ser. No. 85109097 6 Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). It is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). Where both words (i.e., the literal portion) and a design comprise the mark (as in registrant’s mark), then the words are normally accorded greater weight because the words are likely to make an impression upon purchasers, would be remembered by them, and would be used by them to request the goods and/or services. CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed”); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB Ser. No. 85109097 7 1985). See also Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). In registrant’s mark, the literal portion of the mark, namely the letters “SM,” is the dominant portion, and is accorded greater weight over the design features when comparing this mark to applicant’s mark SMWARE. Further, a portion of the design feature, a pictorial representation of a memory card, has been disclaimed, and disclaimed matter is generally considered to be subordinate to the other components of a mark. As for applicant’s mark SMWARE, the examining attorney attempts to show that it likewise is dominated by the letters “SM,” due to the less distinctive feature “WARE.” In this connection, the examining attorney introduced several third- party registrations of marks with a “-WARE” suffix for semiconductor devices and related goods in Class 9; the marks include COREWARE, E-CONNECTWARE, and PHYSWARE. We also take judicial notice of the following dictionary definition of “-ware”: “Articles of the same general kind, made of a specified material, or used in a specific application: hardware; silverware; software.” The American Heritage Dictionary of the English Language (5th ed. 2011).2 This 2 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Ser. No. 85109097 8 evidence suggests that purchasers are accustomed to seeing the suffix “-WARE” for semiconductor devices and like goods. As such, the term plays a subordinate role in applicant’s mark. Further, the first portion of applicant’s mark comprises the letters “SM,” and is the element most likely to be impressed upon a purchaser’s mind. See Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Even though each of the marks is dominated by the identical letters “SM,” the marks must be considered in their entireties; thus, the addition of “WARE” in applicant’s mark and the design feature in registrant’s mark cannot be ignored. Nevertheless, we find that the marks SMWARE and SM and design are similar in sound, appearance and meaning. In view of the similarities, the marks engender similar overall commercial impressions. The similarity between the marks is a factor that weighs in favor of a finding of likelihood of confusion. Applicant argues that the record does not establish that the registered mark is famous, and that this weighs in applicant’s favor. Although the fame of a registered mark is relevant to likelihood of confusion, the Federal Circuit has stated that “we decline to establish the converse rule that likelihood of confusion is precluded by a registered mark’s not being famous.” In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1202, 1205 (Fed. Cir. 2003). Ser. No. 85109097 9 In sum, the relevant du Pont factors weigh in favor of affirming the refusal. We conclude that purchasers familiar with registrant’s semiconductor devices sold under the mark SM and design would be likely to believe, upon encountering applicant’s mark SMWARE for semiconductor devices, that the goods originated with or are somehow associated with or sponsored by the same entity. That is to say, purchasers familiar with registrant’s mark and goods are likely to view applicant’s mark SMWARE for semiconductor devices as a brand extension of registrant’s line of semiconductors sold under its mark SM and design. To the extent that any of applicant's points raises a doubt about likelihood of confusion, that doubt is required to be resolved in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation