Steck-Vaughn Company

Trademark Trial and Appeal Board

Apr 30, 2004

No. 76339123 (T.T.A.B. Apr. 30, 2004)

Mailed: April 30, 2004
Paper No. 11
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Steck-Vaughn Company
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Serial No. 76339123
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Ava K. Doppelt and David L. Sigalow of Allen, Dyer,
Doppelt, Milbrath & Gilchrist, P.A. for Steck-Vaughn
Company.
Sharon A. Meier, Trademark Examining Attorney, Law Office
116 (Meryl Hershkowitz, Managing Attorney).
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Before Hohein, Hairston and Holtzman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Steck-Vaughn Company has filed an application to
register POWER UP! BUILDING READING STRENGTH as a trademark
for goods identified as “computer software and prerecorded
audio tapes for teaching reading.”1
1 Serial No. 76339123, filed November 16, 2001, based on
applicant’s allegation of a bona fide intention to use the mark
in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76339123
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, if 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 POWER UP! as shown
below,
for “computer programs and instruction manuals sold as a
unit.”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.
At the outset, we note that applicant, for the first
time with its appeal brief, submitted a copy of the file
2 Registration No. 1,337,661 issued May 28, 1985; Section 8
affidavit accepted; Section 15 affidavit received. Although the
registration covers other goods and services, the refusal is
based only upon the registrant’s computer programs and
instruction manuals sold as a unit.
Ser No. 76339123
3
wrapper and contents of the cited registration. Although
Trademark Rule 2.142(d) provides that the record in the
application should be complete prior to filing an appeal,
the Examining Attorney has requested that we not exclude
the evidence. (Appeal Brief, p. 10). In view thereof, we
will treat the evidence as properly of record.
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. de Nemours and Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities of the marks and the similarities of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We begin with the goods of applicant and registrant.
Applicant argues that the goods are different in nature
because applicant’s computer software is for teaching
reading, whereas registrant’s computer software is designed
to provide “specialized business functions”. (Brief, p.
8). Applicant submitted a copy of the file wrapper and
contents of the cited registration in support of its
contention. The problem with applicant’s argument is that
registrant’s goods are not limited in the way applicant
Ser No. 76339123
4
suggests. We must consider registrant’s goods as they are
described in the registration and we cannot read
limitations into those goods. See Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1987); Canadian Imperial Bank of Commerce
v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987); and In re Elbaum, 211 USPQ2d 639 (TTAB
1981). When we consider registrant’s goods as they are
described in the registration, we find that they are
broadly described such that they would include computer
software for teaching reading. In re Linkvest S.A., 24
USPQ2d 1716 (TTAB 1992). In view thereof, we find that
applicant’s and registrant’s computer software products are
legally identical, and that they would be offered in the
same channels of trade to the same classes of purchasers,
namely persons who teach reading, such as educators, as
well as parents who wish to teach their children to read.
Moreover, although applicant argues that registrant’s
computer software is designed to provide specialized
business functions, as noted by the Examining Attorney, it
appears from the contents of the cited registration that
registrant’s POWER UP! mark is also used with computer
software for building vocabulary and learning math. Such
computer software is clearly of a type that would be
Ser No. 76339123
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offered in the same channels of trade and to the same
classes of purchasers as computer software for teaching
reading.
We turn next to a consideration of the marks, keeping
in mind the well-established principle that when marks
would appear on identical goods or services, the degree of
similarity necessary to support a conclusion of likelihood
of confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1902). Also, to determine whether applicant’s
mark and the registrant’s mark, when considered in their
entireties, are similar in sound, appearance, connotation
and commercial impression, the test is not whether the
marks can be distinguished when subjected to a side-by-side
comparison. Rather, the question is whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
Ser No. 76339123
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may be more significant than another feature, and it is not
improper to give weight to the dominant feature in
determining the commercial impression created by the mark.
In re National Data Corp., 173 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
In this case, due to the shared term POWER UP!,
applicant’s mark POWER UP! BUILDING READING STRENGTH and
registrant’s mark POWER UP! (stylized) have obvious
similarities in sound, appearance and connotation. The
phrase BUILDING READING STRENGTH is highly suggestive of
applicant’s computer software for teaching reading and
therefore is entitled to less weight in our assessment of
the likelihood of confusion. See In re National Data
Corp., supra. Accordingly, we find that when considered in
their entireties, the marks are highly similar in sound,
appearance, connotation and commercial impression.
Purchasers are likely to assume that the POWER UP! BUILDING
READING STRENGTH computer software for teaching reading
comes from the same source as the POWER UP! computer
software, and that the phrase has simply been added to
highlight the purpose of the goods.
Applicant contends that the purchasers of registrant’s
computer software are sophisticated, but this assertion is
based on applicant’s argument that registrant’s goods are
Ser No. 76339123
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restricted to computer software designed to provide
specialized business functions. As noted above,
registrant’s identification is not limited in such manner.
Furthermore, it appears from the file contents of the cited
registration that registrant’s mark is used with other
types of computer software which may be offered to
purchasers who are not necessarily sophisticated.
In sum, because of the similarity of applicant’s and
registrant’s marks and the legal identity of applicant’s
and registrant’s computer software, we find that there is a
likelihood that purchasers would be confused if applicant
were to use the mark POWER UP! BUILDING READING STRENGTH
for its computer software for teaching reading.
Decision: The refusal to register is affirmed.