Stancil Corp.

Trademark Trial and Appeal Board

Jun 23, 2004

No. 78114064 (T.T.A.B. Jun. 23, 2004)

Mailed:
June 23, 2004
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Stancil Corporation
________
Serial No. 78114064
_______
Guy W. Churchouse for Stancil Corporation.
John Dwyer, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
_______
Before Hairston, Walters and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Stancil Corporation seeks registration on the
Principal Register of the mark TEN - 4 for goods identified
in the application as “computer software for voice
recording purposes” in International Class 9.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has taken the position that applicant’s mark, when
1 Application Serial No. 78114064 was filed on March 11, 2002
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 TTAB
Serial No. 78114064
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used in connection with the identified goods, so resembles
the mark TENFOUR registered for goods identified as
follows:
computer software, computer diskettes, and CD-
ROM’s, all for monitoring electronic messaging,
providing interconnectivity between electronic
messaging systems, platforms, and networks;
regulating electronic messaging information flow,
and for providing addressing, encryption,
translation, and virus scanning for electronic
messaging systems, and instruction manuals
related thereto, in International Class 9
telecommunications services, namely, electronic
mail services, and electronic store-and-forward
messaging, in International Class 38; and
software consulting services and technical
consultation in the field of computer
engineering, in International Class 42.2
as to be likely to cause confusion, to cause mistake or to
deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case. Applicant did not request an oral
hearing before the Board.
We reverse the refusal to register.
In arguing for registrability, applicant contends that
“electronic messaging” is quite separate and distinct from
“voice recording.” By contrast, the Trademark Examining
Attorney argues that applicant’s software is related to
2 Registration No. 2158276 issued on May 19, 1998.
Serial No. 78114064
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registrant’s software and can be used in conjunction with
registrant’s goods and services.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing upon the issue of likelihood of
confusion. In re E. I. du Pont 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 relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
As we turn first to the du Pont factor focusing on the
similarity of the marks, there is no dispute but that the
marks are quite similar as to appearance, sound and
meaning. Whether presented as numerals or words, the
connotation remains the same.3 When spoken, the sound of
both marks is identical. While the marks are somewhat
different in appearance, this slight difference is not
sufficient to create a significant legal distinction
3 We take judicial notice of the most popular connotation of
this term drawn from the “ten code” employed for decades by users
of Citizens Band radios: “Ten-four CB Radio Slang. (Used to
express affirmation or confirmation) Cf. ten code [1960 –1965]”
The Random House Dictionary of the English Language (Second
Edition, Unabridged 1987) p. 1956; “ten-four exclamation (also
10-4) MAINLY US said to mean that a message has been received,”
Serial No. 78114064
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between the marks as to their overall commercial
impressions. Hence, the decision of likelihood of
confusion in this case turns on the relationship of the
goods and services.
The Trademark Examining Attorney placed pages from
applicant’s website into the record. That information
includes details about the involved digital recording
product directed to the public safety sector, commercial
contact centers and financial institutions:
Welcome to the Stancil Product line-up

Stancil started voice logging and from day one we focused on the

24 X 7 Public Safety, Military and Security environments.




This focus has now reached across seven decades and our mission has not
changed - using the latest technologies to perform the functions these intense
applications require.




Our TEN-4 recorder was designed from the ground up to address these
requirements. We listened to you and did it your way with relentless dedication
to address your specific needs.




Stancil's voiceXP Series TEN-4 recorder has an array of industry firsts:




o Windows 2000 or XP Operating System

o .NET distributed component architecture

o XML Backup

o SQL Server MSDE Engine

o Streaming Audio Plus Checking a Call in Progress

o Message Queuing Connectivity

The use of the latest PC Technologies allows us to add new functionality and
enhance our traditionally excellent operational features:




o Unlimited Simultaneous Multi Channel Real Time Playback

o Scenario Reconstruction

o TEN-Zoom - view from 24 hours to one minute

o TEN-9 Two Channel Repeat - True Instant Recall4

Cambridge Advanced Learner's Dictionary,
http://www.dictionary.cambridge.org
4 http://www.stancilcorp.com/new_products.htm
Serial No. 78114064
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and

The most advanced multi-channel digital voice
recorder on the market today.

Digital Voice Recorders from
Stancil Corp.

The TEN-4 Digital Voice Logger is the world's first voice logger based on
Microsoft's .NET framework.
TEN-4 features include:
• Off Hook Voltage Sense recording
• VOX recording
• Continuous recording
• Record On Demand
• Distributed storage
• DVD-Ram
• Hard drive or RAID 1 or 5 Online Storage
Playback features include:
• Customizable and secure user authentication
• Tabular call detail view and playback
• Multi-channel view - the multi-channel simultaneous play View
that can be used to play multiple channels at the same time
and/or display calls highlighted in the Tabular View for scenario
or tactical analysis
• Spoken Time - provides a spoken time announcement of the
date and time of a call prior to playback
• Detailed searching
• Call tagging - A call or group of calls can be tagged whilst in
progress or at a later time
• Playback looping
• Fast forward, Rewind, Next and Previous Call controls for fast
navigation
• Time based zoom control for detailed analysis
• Master volume control
• Channel volume controls - set the playback volume on an
individual channel
• Speaker selection - select which speaker each channel plays
back on5
5 http://www.stancilcorp.com/new_features.htm
Serial No. 78114064
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As to registrant’s goods and services, we agree with
applicant that registrant’s software and services, as
identified, pertain exclusively to “electronic messaging,”
and the identification of goods and the recital of services
point to a company whose software solutions provide secure
email gateways for businesses, relying on servers capable
of filtering, virus protection, translation, encryption,
decryption, etc. Registrant’s “store and forwarding”
services (International Class 38) are inextricably tied
into email transmissions, and its software consulting
services (International Class 42) are related generally to
“computer engineering.”
Yet the Trademark Examining Attorney argues that the
definition of “messaging” includes “voice mail”:
By definition, the registrant’s electronic
messaging services involve the conveying of “voice
mail,” and voice mail involves the recording of
telephone messages. The applicant’s voice
recording software as identified in the application
is not limited to a specific field, nor to specific
purchasers, nor to a specific channel of trade.
Therefore, the examining attorney must presume that
the applicant’s voice recording software can be
used in recording telephone voice mail messages for
electronic messaging, and in recording telephone
voice messages in connection with store-and-forward
messaging services. [citation omitted].
(Trademark Examining Attorney’s appeal brief, p. 7)
Serial No. 78114064
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However, the Trademark Examining Attorney has not
established that registrant’s repeated use of “electronic
messaging” should be read so loosely that it includes the
recordation of voice mail messages. Moreover, we find no
evidence in this record that email software is related in
any way (e.g., commercially, technologically, by channels
of trade, etc.) to voice messaging software.
As to the du Pont factor focusing on the conditions
under which and buyers to whom sales are made, it is clear
from applicant’s webpages placed into the record by the
Trademark Examining Attorney that these multi-channel
recorders are expensive and high-technology products being
selected by careful and sophisticated purchasers. This
helps to reduce the likelihood of confusion.
In conclusion, in spite of the fact that these
respective marks create similar overall commercial
impressions, we find that the Trademark Examining Attorney
has not demonstrated that applicant’s voice recorders are
related to registrant’s secure email products and
collateral services, such that prospective purchasers would
be confused as to the source of the respective goods and
services. Hence, on this record, we do not find a
likelihood of confusion, and this application will proceed
Serial No. 78114064
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to publication in the Trademark Official Gazette. We
acknowledge that should a different record be created
within an inter partes proceeding, a different result might
well ensue.
Decision: The refusal to register based upon Section
2(d) of the Trademark Act is hereby reversed.