The Scientist, Inc.v.MicroMath, Inc.

Trademark Trial and Appeal Board

Jun 4, 1998

No. 92023598 (T.T.A.B. Jun. 4, 1998)

Hearing: Paper No. 18
July 10, 1997 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 4, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
The Scientist, Inc.
v.
MicroMath, Inc.
_____
Cancellation No. 23,598
_____
Stephen J. Myers of Seidel, Gonda, Lavorgna & Monaco for The
Scientist, Inc.
Charles L. Roberts of Madson & Metcalf for MicroMath, Inc.
_____
Before Hanak, Hohein and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
The Scientist, Inc. has petitioned to cancel the
registration owned by MicroMath, Inc. for the mark SCIENTIST
for “computer software and instruction manuals sold as a
unit for performing numerical analysis and plotting.”1
As grounds for cancellation, petitioner asserts
priority and likelihood of confusion under Section 2(d) of
the Trademark Act, contending that respondent’s mark, when

1 Registration No. 1,848,523, issued August 9, 1994.
Cancellation No. 23,598
2
applied to respondent’s goods, so resembles petitioner’s
previously used and registered mark THE SCIENTIST for a
“newspaper”2 as to be likely to cause confusion.
Respondent, in its answer, denied the salient
allegations comprising the priority and likelihood of
confusion claim.
The record includes the pleadings; the file of the
involved registration; and both a certified copy of
petitioner’s pleaded registration and respondent’s responses
to petitioner’s interrogatories and request for production,
introduced by way of petitioner’s notice of reliance. In
addition, petitioner offered the testimony, with exhibits,
of its chief operating officer. Respondent did not take
testimony or offer any other evidence. Both parties filed
briefs on the case. Only petitioner’s counsel appeared at
an oral hearing held before the Board.
Petitioner publishes a newspaper twenty-four times per
year. Although the newspaper originally targeted readership
in all of the scientific disciplines, it has narrowed its
focus primarily to the life sciences. More specifically,
according to Alfred Welljams-Dorof, petitioner’s chief
operating officer, the newspaper concentrates on the
business of science, with articles about companies, career
interests, job opportunities, salaries and the like. Mr.

2 Registration No. 1,479,185, issued March 1, 1988 on the
Cancellation No. 23,598
3
Welljams-Dofof testified that readership surveys show that
petitioner’s newspaper has been identified as “the most
credible source on the business of science, the business of
professional interests of scientists.” (dep., p. 26) In a
section of the newspaper captioned “Tools and Technology,”
opposer covers developments in computer hardware and
software. THE SCIENTIST newspaper was launched in 1986, and
current figures show circulation at slightly above 50,000.
The newspaper is also accessible as an electronic
publication on the Internet free of charge, and the Web site
averages about 40,000 hits per month. Mr. Welljams-Dorof
described petitioner’s newspaper as a “controlled-
circulation publication meaning that we’re not going after
subscriptions, but we’re being distributed by about eight or
nine professional societies.” (dep., p. 22) A large
percentage of the newspapers are distributed for free, with
most of the newspaper’s revenue coming from running others’
advertisements in the publication. These advertisements
include some for software. Promotional expenditures have
exceeded $7 million. The newspaper is advertised through
direct mailings, distribution of media kits, and attendance
at trade shows.
Respondent sells computer software under the mark
SCIENTIST for use in fitting experimental data to user

Supplemental Register; Section 8 affidavit filed and accepted.
Cancellation No. 23,598
4
defined equation systems. The mark has been in use since
1993. The goods are sold through direct mail and through
distributors and resellers for sale, ultimately, primarily
to Ph.D. researchers in academic or corporate settings. The
goods are advertised in magazines and through direct-mail
solicitations. The computer software, depending on the
version, has a price range of $295-$395.
Respondent, in its brief, does not dispute petitioner’s
priority of use. Moreover, the record establishes that
petitioner’s first use predates respondent’s first use.
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. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). The factors deemed
pertinent in this proceeding now before us are discussed
below.
With respect to the marks, THE SCIENTIST and SCIENTIST
differ by only the presence of the definite article “the” in
petitioner’s mark. The marks are virtually identical in
terms of sound, appearance and meaning.
In comparing the marks, we have kept in mind the
weakness of the term “SCIENTIST” in petitioner’s mark.
Petitioner’s pleaded registration issued on the Supplemental
Register. In its petition for cancellation, however,
Cancellation No. 23,598
5
petitioner alleged that it has expended considerable effort
and expense in promoting its mark with the result that the
purchasing public has come to know, rely upon, and recognize
petitioner’s mark as a source indicator, and that petitioner
has an exceedingly valuable goodwill established in its
mark.3 Petitioner then contends in its brief that its mark
has acquired distinctiveness and that it is entitled to
claim the benefits of Section 2(f) of the Act.
After reviewing the record, we are constrained to agree
with petitioner that its mark THE SCIENTIST, as used in
connection with its newspaper, has acquired distinctiveness.
The evidence of record bearing on this point includes the
following: over ten years of continuous use with no
knowledge of any use by others of similar marks for similar
goods; testimonials from scientists and researchers,
published in petitioner’s newspaper, attesting to the value
of reading THE SCIENTIST; a circulation of over 50,000
readers; and over $7 million in promotional expenditures.
Accordingly, we find that petitioner’s mark has
acquired distinctiveness. Nonetheless, due to the weakness
of the term “SCIENTIST” in petitioner’s mark, a term which
is readily understood and which clearly identifies the
reading audience of petitioner’s newspaper, the mark is
entitled to what is sometimes termed a narrow scope of

3 We find that this pleading, when construed liberally, can be
Cancellation No. 23,598
6
protection. In re The Clorox Co., 578 F.2d 305, 198 USPQ
337, 341 (CCPA 1978)[“The level of descriptiveness of a
cited mark may influence the conclusion that confusion is
likely or unlikely.”]; see also: In re Bed & Breakfast
Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974); and Gruner & Jahr USA Publishing v.
Meredith Corp., 991 F.2d 1072, 26 USPQ2d 1583 (2d Cir.
1993).
The crux of the present controversy centers on the
relatedness of the goods. The nature of petitioner’s
“newspaper” is revealed in its “Editorial Overview” (part of
petitioner’s ex. 29):
The Scientist is the only independent
news magazine for the life sciences
professional. Its editorial mission is
unique--to focus on the professional and
career interests of scientists working
in industry, academia, government, and
independent research labs.
Many other publications present original
research papers or coverage of new
discoveries. Only The Scientist
delivers comprehensive reports on the
issues and events that directly affect
the careers of life scientists. These
include: current funding trends in the
public and private sectors; government
legislation, regulation, and
policymaking; salary surveys and
employment forecasts; hot research areas
and the career opportunities they
present; the economic impact of
technology transfer, licensing, and

viewed as encompassing a claim of acquired distinctiveness.
Cancellation No. 23,598
7
patenting; mergers and acquisitions by
R&D-intensive corporations; and the
ethical debates arising at the interface
between science and society.
To best meet its unique mission, The
Scientist is strategically organized
into five distinctive sections: News,
Opinion, Research, Profession, and Tools
& Technology.
The specific nature of respondent’s computer software
for performing numerical analysis and plotting is spelled
out in the introduction to the user’s handbook for
respondent’s product:
SCIENTIST was designed to provide a
comprehensive solution to the problem of
fitting experimental data under
Microsoft Windows on MS-DOS based
microcomputers. It includes the
capability of solving systems of model
equations that can include nonlinear
equations, ordinary differential
equations and Laplace transforms.
SCIENTIST is a package for researchers
who “know what’s going on” with their
data and need to establish solid
parameter values to model real-world
phenomena. The easy-to-use interface in
SCIENTIST greatly facilitates model
entry and manipulation, data management,
and control of initial estimates and
constraints on parameter values, as well
as statistics and graphics output.
The interactive nature of SCIENTIST
leads to a higher likelihood of finding
optimal parameter values than if fitting
were done in batch results. It also
enables users to develop a much greater
awareness of the sensitivity of models
to parameter values. With this program,
the power of present day 80386, 486 and
Pentium machines makes it entirely
feasible to develop and fit complicated
Cancellation No. 23,598
8
models using nonlinear, differential,
and Laplace transform equations on
microcomputers.
Petitioner contends that the parties’ newspaper and
software are related, that both products are directed to the
scientific and research community, and that purchasers would
expect the products, when sold under virtually identical
marks, to emanate from the same source. Petitioner makes
much of the fact that its newspaper includes advertisements
for computer software and that editorial material covers the
topic of computer software. Petitioner also points out that
it is considering making its newspaper available on a CD-ROM
and petitioner contends that this product, like respondent’s
software, would be used with computers.
Based on the record before us, we simply find too
tenuous the connection between, on the one hand,
petitioner’s newspaper, which is directed to the business of
science (as opposed to a technical science publication) and,
on the other hand, respondent’s highly technical and
specialized computer software that is designed to fit model
equations to experimental data. The record is devoid of any
evidence showing that newspaper publishers have branched out
into the selling of computer software. It is not
surprising, therefore, that Mr. Welljams-Dorof testified
that petitioner has no plans or interest in breaking into
the business of producing or selling computer software. In
Cancellation No. 23,598
9
short, the record does not establish any rational reason why
highly educated scientists and researchers would ascribe a
common source to petitioner’s newspaper and respondent’s
software, even when sold under virtually identical marks.
Another factor in applicant’s favor is the
sophistication of purchasers. As noted above, both parties’
products are directed to highly educated scientists and
researchers. Although such individuals are not immune from
confusion as to source, the differences between the products
would suggest that these purchasers would not be so confused
even when confronting the virtually identical marks involved
here.
Petitioner claims that its newspaper is “well-known and
highly regarded in the scientific community.” (brief, p. 4)
To the extent that petitioner would have us conclude that
its mark is famous, the evidence falls short. Although
petitioner’s mark may enjoy some notoriety in a narrow
field, we cannot conclude on the present record that the
mark THE SCIENTIST has achieved the status of a “famous”
mark even in that narrow field. Cf.: Kenner Parker Toys v.
Rose Art Industries, 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992).
With respect to the presence of actual confusion, the
only portion of the record pertaining to this du Pont factor
is Mr. Welljams-Dorof’s testimony with respect to exhibit 3,
Cancellation No. 23,598
10
which appears to be a handbook for using applicant’s
product, that he was confused “when I first saw it,”
thinking that “it might be one of our old media kits,
because the prominent headline is ‘Scientist.’” (dep., p.
49) Suffice it to say that this evidence is hardly the type
of evidence which is probative in showing actual confusion
as to source. The remainder of the evidence shows that
neither side is aware of any reported instance of actual
confusion in the marketplace during the more than three
years of contemporaneous use of the marks.
Based on the record before us, we view the likelihood
of confusion claim asserted by petitioner as amounting to
only a speculative, theoretical possibility in a purchase
made by highly educated scientists and researchers. The
goods of the parties are distinctly different,
noncompetitive and used for totally unrelated purposes.
Language by our primary reviewing court is helpful in
resolving the likelihood of confusion controversy in this
case:
We are not concerned with mere
theoretical possibilities of confusion,
deception or mistake or with de minimis
situations but with the practicalities
of the commercial world, with which the
trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
citing Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
Cancellation No. 23,598
11
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff’g
153 USPQ 412 (TTAB 1967).
In sum, we find that, in light of the weakness of the
term “SCIENTIST” in petitioner’s mark, the differences
between the parties’ goods, and the highly educated
purchasers thereof, confusion is not likely to occur in the
marketplace.
Decision: The petition for cancellation is denied.
E. W. Hanak
T. J. Quinn
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board