Telco Solutions, Inc.

Trademark Trial and Appeal Board

Aug 12, 2013

No. 85593727 (T.T.A.B. Aug. 12, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Telco Solutions, Inc.
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Serial Nos. 85593717 and 85593727
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Susan O. Goldsmith and Scott M. Smedresman of SorinRand LLP for Telco
Solutions, Inc.

Jason Paul Blair, Trademark Examining Attorney, Law Office 104 (Chris Doninger,
Managing Attorney).
_____

Before Bucher, Shaw, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Applicant has appealed the final refusal of its applications for the mark
SAGE for:
software for use in generating and managing subpoenas,
service of warrants and service of court orders, all for law
enforcement purposes in Class 9;1 and
software as a service (SAAS) services featuring software
used in generating and managing subpoenas, service of

1 Application Serial No. 85593717, filed April 10, 2012, based on use in commerce pursuant
to Section 1(a) of the Trademark Act. The asserted date of first use and first use in
commerce is April 5, 2012.
Serial Nos. 85593717 and 85593727

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warrants and service of court orders, all for law
enforcement purposes in Class 42.2
The applications were refused registration pursuant to Section 2(d) of the
Trademark Act on the ground of likelihood of confusion with the mark SAGE for:
Computer software for use in managing accounting and
business information, retrieving accounting and business
information, viewing accounting and business
information, managing contacts and performing
accounting functions in the fields of business
management, information services, and research systems;
computer software for use in electronic commerce to allow
users to perform electronic business transactions via a
global computer network, electronic mail, Internet
website hosting, Internet website development, and
Internet access; and accompanying user manual
documentation for use with all of the above in Class 9;
Business management services for the promotional
products and business forms industries in Class 35;
Electronic commerce payment services, namely
electronically capturing and processing payment
transactions in Class 36;
Electronic transmission of data and documents via
computer terminals; and electronic mail services in Class
38; and
Computer consulting services for business; computer
services, namely, designing and implementing network
web pages for others; and customized software
development and programming in Class 42.3

2 Application Serial No. 85593727, filed April 10, 2012, based on use in commerce pursuant
to Section 1(a) of the Trademark Act. The asserted date of first use and first use in
commerce is March 30, 2012.
3 Registration No. 3238564, issued May 8, 2007; Section 8 Affidavit accepted on May 30,
2013 and Section 15 Affidavit acknowledged on May 31, 2013.
The examining attorney does not rely on any of the goods in the cited registration and
only relies on the services identified as “customized software development and
programming.” Our discussion will also be limited to these services.
Serial Nos. 85593717 and 85593727

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In our discussion, we are treating both applications as one since the issues
are identical. The marks in the two applications are identical and the goods and
services are very closely related in that both involve software for generating and
managing subpoenas, service of warrants and service of court orders, all for law
enforcement purpose. Jointly, applicant’s goods and services are referred to as
Applicant’s Software.
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 start by comparing the marks at issue. Both applicant’s mark and the
cited mark consist solely of the word SAGE.4 Thus, the marks are identical.
Our evaluation of the goods and services is based on the goods and services as
identified in the registration and the applications. Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.

4 Registrant’s mark is characterized as being in typed form and applicant’s mark is
characterized as being in standard character form. Both formats are the same. In 2003,
Trademark Rule 2.52(a) was amended to refer to “typed” drawings” as “standard character”
drawings.
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1990). see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002).
Applicant’s Software consists of highly specialized software and software
services for use in “generating and managing subpoenas, service of warrants and
service of court orders, all for law enforcement purposes.” The examining attorney
contends that Applicant’s Software is closely related to the services identified as
“customized software development and programming” in the cited registration.
To establish a relationship between Applicant’s Software and the
aforementioned services, the examining attorney has submitted thirteen
registrations that cover both software and software development. In ten of the
registrations, the software is for computer system development. Thus, the goods
and services are related as they are both used for computer system development.
See, for example,
Reg. No. 2524590 for the mark VVI for “computer
software for data visualization by creating graphics and
text-oriented documents, real-time custom displays and
graphics and control interfaces with user interface tools
and programming libraries; computer software that
manages the process of making software and which uses
visual interfaces and code parsing and analysis
algorithms for an interactive development environment
(IDE); computer software compiler, database server and
web server programs that are used in connection with
data visualization and software development”;
Reg. No. 3013568 for the mark INFOETHER for
“computer software for the creation and testing of third-
party software programs including the automation of the
design, development, testing, and support processes;
computer software tools for use by developers and
programmers and testers for managing the development
of software programs; computer software used to facilitate
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and coordinate collaboration among users and third-party
programs as well as deliver content over a network,
including the internet; computer software used to
integrate information objects from disparate third-party
software programs; software and firmware for integration,
contextualization and use of information and data from
third-party programs on a desktop computer, laptop,
server, cell phone, game box, set top box or personal
digital assistance” and
Reg. No. 3547785 for the mark eMAM for “computer
software for application and database integration;
computer software for manipulating digital audio
information for use in audio media applications; computer
software for organizing and viewing digital images and
photographs; computer software for processing digital
music files; computer software for the collection, editing,
organizing, modifying, book marking, transmission,
storage and sharing of data and information; computer
software to automate data warehousing; computer
software to enhance the audio-visual capabilities of
multimedia applications, namely, for the integration of
text, audio, graphics, still images and moving pictures;
database management software for digital asset
management.”
See Exhibits to Office action dated November 27, 2012. Only two registrations
specified software designed for specific industries. These registrations are not
sufficient to establish that consumers would expect customized software
development and programming to be related to software restricted to a highly
specialized industry, i.e., law enforcement, for a very restricted purpose, i.e.,
generating and managing subpoenas, service of warrants and service of court
orders.
In addition, the examining attorney submitted web pages from several
different websites. As with the registrations discussed above, the goods offered on
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some of sites are for computer system development, which is related to customized
software development and design. See for example,
Intel (software.intel.com), which sells software for
developing software5 and
Helexis (www.helexis.com), which develops and sells
software products for MS Windows6.
Similarly, in other sites, either software or software development services are
offered. For example, Surge located at (www.surgeforward.com), offers custom
software development and consulting, however, software is not sold. (The website
states: “At Surge, custom software development and consulting is our business.”)7
Other websites reflect the sale of specific software products, but not custom
software development. For example, CyberTech (www.onecybertech.com) offers
online gaming software but no custom software development8 and Terrace
(www.terrace.com) offers agent and broker software, but no custom software
development.9
The examining attorney also submitted web pages from three other sites:
Turbocam International (www.turbocam.com)10 Kubica (www.kubicacorp.com)11 and
Doveware Designs (www.dovewaredesigns.com)12. On the Turbocam International

5 Exhibit to Office action dated July 30, 2012.
6 Exhibit to Office action dated November 27, 2012.
7 Exhibit to Office action dated July 30, 2012.
8 Exhibit to Office action dated July 30, 2012.
9 Exhibit to Office action dated November 27, 2012.
10 Exhibit to Office action dated July 30, 2012.
11 Exhibit to Office action dated November 27, 2012.
12 Exhibit to Office action dated November 27, 2012.
Serial Nos. 85593717 and 85593727

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website, it states that “Turbocam’s partner, CAMplete Solutions specializes in
custom CAD/CAM software.”13 Turbocam manufactures 5-axis machines. It does
not develop software. The exact nature of the products and services offered by
Kubica and Doveware Designs are not clear from the web pages submitted.
However, there is no evidence that either company offers both customized software
development and sells software that is restricted to a highly specialized industry.
Accordingly, neither these web pages nor any of the other web pages of record
establish that consumers would expect customized software development and
programming to be related to software restricted to a highly specialized industry
(i.e., law enforcement) for a very restricted purpose (i.e., generating and managing
subpoenas, service of warrants and service of court orders).
Applicant relies on the unpublished decision of In re STMicroelectronics NV,
Serial No. 77500550 (TTAB March 10, 2010), to support its position that there is no
likelihood of confusion. Quoting the case, applicant argues that there is “no per se
rule that every computer program is related to all software design services” and
that “registrations having specialized computer software unrelated to applicant’s
goods [and services] have no probative value as to the relatedness of applicant’s
software to design services in general.” In re STMicroelectronics NV, Id at 4 (No
likelihood of confusion between FLEXILOGIC for “computer hardware and software

13 CAD/CAM is an acronym for computer aided design and computer aided
manufacturing, which consists of the use of computers in both the design and
manufacture of a product. Microsoft Computer Dictionary, p. 101 (5th ed. 2002).
- The Board may take judicial notice of dictionary evidence. University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
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for noise reduction, spatial and strength processing, temporal tracking and gesture
recognition of touch input devices” and the identical mark, FLEXILOGIC, for
“computer software designed for others.”). The examining attorney acknowledges
that this case is on-point, however he argues that because In re STMicroelectronics
NV is an unpublished decision, “like many other rulings reversing likelihood of
confusion refusals regarding software and software development, the examining
attorney is forced to give it little, if any weight, especially since precedential case
law conflicts.” Examining Attorney’s Brief, p. 7. While an unpublished decision is
not binding on the Board, citation is permitted. In re the Procter & Gamble
Company, 105 USPQ2d 1119, 1120-21 (TTAB 2012). In the case at bar, where the
unpublished decision is virtually on-point, reliance thereon is appropriate.
Moreover, the precedential case law relied on by the examining attorney does
not conflict with the decision in In re STMicroelectronics NV. In particular, the
Federal Circuit in Octocom, 16 USPQ2d at 1786-1787, confirmed that there is no
per se rule between marks in the computer field and that similarity between goods
and services must be determined on the basis of the goods and services as identified
in the application and registration.14 These basic principles are not disputed in In
re STMicroelectronics NV. To the contrary, the Board found that the broadly-
recited services of “computer software design for others” are not related to

14 Similarly, the Court in Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344,
1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) and the Board in In re Jump Designs, 80
USPQ2d 1370, 1374 (TTAB 2006), and In re N.A.D. Inc., 57 USPQ2d 1872 (TTAB 2000)
reassert the long-standing principle that absent restrictions in the application and
registration, goods and services are presumed to travel in the same channels of trade to the
same class of purchasers. None of these decisions is inconsistent with the holding in In re
STMicroelectronics NV.
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applicant’s specialized software. As stated, “notwithstanding registrant’s broad
recitation of software design services, without some evidence demonstrating a
commercial relationship, we cannot presume that software design services are
related to all computer software and hardware in International Class 9, irrespective
of the wording of the latter identification of goods.” In re STMicroelectronics NV, pp.
4-5.
Accordingly, we find that registrant’s services are not related to Applicant’s
Software. As such, there is no presumption about the channels of trade or the
purchasers. The examining attorney has submitted no evidence that registrant’s
services and Applicant’s Software travel in the same channels of trade or that they
are sold to the same purchasers.
Applicant also argues that the identification of goods and services in its
applications limits the users of Applicant’s Software to law enforcement personnel,
who are highly skilled professionals unlikely to be confused and who are looking for
a very specific product.15 We agree that applicant’s customers and users are
sophisticated and that they are unlikely to be confused.
We have no reason to believe there will be a commonality in the channels of
trade or classes of purchases. We are not willing to presume that Applicant’s
Software, which is highly specialized and restricted to a specific industry, narrowly
defined as law enforcement, are in any way related to registrant’s broad recitation
of customized software development and programming.

15 Appeal Brief, p. 5.
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Having considered all the evidence and arguments on the relevant du Pont
factors, whether discussed herein or not, we find that despite the fact that the
marks are identical, there is no likelihood of confusion between the mark SAGE for
Applicant’s Software (software for use in generating and managing subpoenas,
service of warrants and service of court orders, all for law enforcement purposes,
and software as a service (SAAS) services featuring software used in generating and
managing subpoenas, service of warrants and service of court orders, all for law
enforcement purposes) and the mark SAGE for “customized software development
and programming.”
Decision: The refusals to register are reversed.