TomTom International B.V.

Trademark Trial and Appeal Board

Mar 22, 2013

No. 79091666 (T.T.A.B. Mar. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re TomTom International B.V.
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Serial No. 79091666
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David R. Haarz of Harness Dickey & Pierce PLC,
for TomTom International B.V.
Katherine S. Chang, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
_____

Before Bucher, Taylor and Hightower,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
TomTom International B.V. (“applicant”) seeks registration on the Principal
Register of the mark TOMTOM VIA (in standard character format) for goods and
services described, as amended, as follows:
computer hardware and software for use with satellite and GPS navigation
systems for navigation purposes; computer software featuring route planners
and electronic maps for navigation and digital dictionaries for translation
purposes; software for travel information systems for providing or displaying
travel advice and information regarding petrol stations, car parks,
restaurants, car dealers and other travel and transport related information;
software for information management for the transport and traffic sector;
software for viewing electronic maps; downloadable electronic maps; software
for operating route planners; route planners in the form of hand-held
Serial No. 79091666
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personal computers; location, orientation and navigation, and global
positioning systems (GPS) consisting of computers, computer software,
transmitters, global positioning system receivers (GPS) and satellite
receivers, network link for interface systems, patch cables, and parts and
accessories therefor; holders for hand-held computers; satellite and radio
transmitter and receiver apparatus technology, namely, processors, mobile
telephones and receivers; telecommunications installations, networks and
apparatus, namely, mounting racks especially fitted for telecommunications
hardware and telecommunication switches; computer terminals, all in
particular for the use of navigation systems, route planners, and digital maps
in International Class 9;
secure and non-secure telecommunications services, namely, transmission
and delivery of digital data, photographs, audio files, data, information and
image signals by means of computers, cable radio and satellite transfer, all in
particular for navigation systems, route planners and the use of electronic
maps; telecommunication services, namely, providing of temporary access to
non-downloadable software providing map images and geographical and
itinerary information obtained with the aid of a global positioning system
(GPS) to enable others to determine locations or directions accurately; secure
and insecure telecommunication services for the electronic transfer and
temporary storage of digital data, photographs, audio files, data, information
and image signals, all in particular for navigation systems, route planners
and the use of electronic maps; technical consultancy in connection with the
aforementioned services in International Class 38; and
providing of navigation and information services, namely, information
relating to traffic and traffic jams; all the aforesaid services also provided via
a communications network or a cellular telephone or wireless navigation
system in International Class 39.1
The examining attorney has refused registration of applicant’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that
registration would lead to a likelihood of confusion in view of the following three
marks owned by two separate entities:

1 Application Serial No. 79091666 was filed on July 26, 2010, pursuant to Section 66(a) of
the Trademark Act, 15 U.S.C. § 1141f(a).

Serial No. 79091666
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for “wireless communication apparatus; namely, computer
programs for modems, wireless local loop telephones, cellular
telephones, Personal Communication Services (PCS) handsets,
Personal Digital Assistants (PDAs); Personal Digital Assistant
PDA devices processors, namely, handheld digital devices
having programmable capacity and capacity to communicate by
electronic, digital, microwave, broadband, analog, radio, and
satellite using voice, graphics, video, data, sensory, infrared,
ultraviolet, and laser audio transmissions in the nature of
electronic personal organizers, mobile phones, smartphones,
portable and pocket-size personal computers, palmtop
computers in the nature of electronic personal organizers,
personal navigational global positioning systems (GPS),
handheld and portable multimedia players, smart computers
having context, user and location awareness and which may be
outfitted and adaptable with modem, memory, PC MCIA slots,
disk drives, keyboard, and monitor, mobile digital devices with
computer notebook functionality and connectivity in a handheld
portable micro-sized form and which may be adaptable and
fitted with modem, memory, PC MCIA slots, disk drives,
keyboard, and monitor in the nature of electronic personal
organizers, mobile phones, smartphones, portable and pocket-
size personal computers, palmtop computers in the nature of
electronic personal organizers, personal navigational Global
Positioning Systems (GPS), handheld multimedia players,
smart computers having context, user and location awareness
and which may be outfitted and adaptable with modem,
memory, PC MCIA slots, disk drives, keyboard, and monitor,
wireless digital devices in the nature of mobile and handheld
phones, smartphones, imaging smartphones, hands-free
phones, handheld multimedia players, electronic personal
organizers, electronic personal information management
organizers, portable and pocket-size personal computers,
palmtop computers in the nature of electronic personal
organizers, smart computers having context, user and location
awareness and which may be outfitted and adaptable with
modem, memory, PC MCIA slots, disk drives, keyboard,
monitor, pocket printer, pocket camera, and pocket video
camera, remote devices in the nature of portable micro sized
computers with notebook functionality for the mobile enterprise
having capabilities of remote desktop, remote email and
transparency access to data, portable personal navigational
Global Positioning Systems (GPS), smart computers having
context, user and location awareness and with integrated
multidimensional data, sound, video and graphics, portable
multimedia player, public kiosks in the nature of computer
terminals, and portable computer terminals both allowing dial-
Serial No. 79091666
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up connectivity and personal computer access, communication
devices having capacity for acquisition, multiplexing,
transmission, encoding, compression, filtering, transforming,
decompression, decoding, demultiplexing and reception of
communications data in the nature of smart phones, portable
computers, portable interactive learning computers, electronic
organizers, and voice-over software for transmitting and
receiving communication signals, games and other data, parts
and components thereof and accessories therefor; integrated
circuits containing chipsets for spread spectrum modulation
and demodulation, error correction encoding and decoding,
voice coding and preprogrammed memories containing
processor instructions” in International Class 9;2
VIA for “computers, notebook computers, laptop computers, portable
computers, handheld computers, interactive computer kiosks
used in retail, entertainment and hospitality establishments;
computer programs for controlling access to and use of stand-
alone computers, namely, network access server hardware and
operating programs for use with stand-alone kiosk computers
which may provide Internet access points, microcomputers,
computer hardware, namely, semiconductors, microprocessors,
integrated circuits, computer chips, computer motherboards,
computer daughterboards, computer graphics boards, computer
interface boards, computer accelerator board, circuit boards;
computer workstations, namely, processors, central processing
units, controllers, namely, electrical controllers, ethernet
controllers; graphic cards; multi-output computer cards that
feature an analog mixer, allowing a computer-based recording
system to behave more like a traditional analog one;
multimedia chipsets with integrated graphics and storage for
desktop and notebook computer environments, computer
chipsets for use in transmitting data to and from a central
processing unit, computer peripherals, computer keyboards,
computer printers, computer monitors, computer driver utilities
programs for graphics; integrated circuits for spread spectrum
modulation and demodulation error correction encoding and
decoding, voice coding and preprogrammed memories
containing processor instructions; software programmable
microprocessors; hand-held devices, namely cellular telephones,
digital telephones, Personal Digital Assistants (PDAs), tablet
PCs, electronic personal organizers, handheld personal
computers, MP3 players, handheld joy sticks and remote
controls for playing interactive video games; extended

2 Registration No. 3083408 issued to VIA Technologies, Inc. (a Taiwan corporation) on
April 18, 2006; Section 8 affidavit (six-year) accepted. No claim is made to the exclusive
right to use the word “Telecom” apart from the mark as shown.
Serial No. 79091666
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multimedia software recorded on magnetic media featuring
games and stories, children's educational software featuring
instruction in the field of graphics, animation, interactive
communications, movies and music videos; mobile computers,
mixed-signal integrated circuits, personal electronics hardware
with digital media playback and recording capabilities; wireless
local loop telephones; software and hardware for management,
storage, communications and network management of digital
media and enhancement of graphical and video display;
software for interactive multimedia disc players which allows
the contents of multimedia to be transmitted across global
communications networks; telematic systems namely, wireless
mobile PC devices designed for use in moving vehicles that can
provide entertainment, mobile telephony, vehicle monitoring,
navigational information; satellite navigational systems,
namely a global positioning system; entertainment systems
comprising entertainment handsets, television displays and
high definition television displays, chrome programmable and
three-dimensional video engines, hardware digital accelerators
supporting displays, namely, rotating monitors and multiple
screen configurations, featuring real-time video effects and
filtering; consumer electronics systems comprised of modems,
base transceiver stations and portable stations, switching
platforms, access nodes and data cards for scrambling,
descrambling, encoding and decoding of voice, data, image and
video transmissions, entertainment hardware and software
that can record, create and play content, namely, video game
software, interactive video games of virtual reality comprised of
computer hardware and software; television sets, high
definition television (HDTV) sets, set top boxes, hardware for
graphic displays; hardware for storage, transmission, reception,
reproduction, operation, processing, generation of video,
graphics, electronic messages, voice messages, data, sensory
signals, sound and images; computer software for use in
providing multiple user access to a global computer information
network for searching, retrieving, transferring, manipulating
and disseminating a wide range of information; computer
firmware, namely, computer utility software and other
computer software used to maintain and operate computer
system all stored in a computer's read only memory or
elsewhere in the computer's circuitry, operating system
software; BIOS software; computer networking hardware,
telecommunications and data networking hardware, namely
devices for transporting and aggregating voice, data, and video
communications across multiple network infrastructures and
communications; parts and fittings for use with wireless
telephones, computer and telecommunications networking
Serial No. 79091666
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software for wireless network communications and connectivity,
networking servers, computer network adapters, networking
switches, routers, hubs, wireless and wired modems, computer
communication and networking products, namely, parallel
communication interface adapters, serial communication cards,
synchronous communication cards, telephony cards; mobile
telephones, computer software for use in performance and
display of graphics and digital media; computer software for
visual, voice and touch activated devices for generating, storing,
transmitting and receiving communication signals and other
data; semiconductors, integrated circuits, electronic
subassemblies, subassemblies comprising single board
computers, serial and parallel interface cards, disc and tape
controller cards, parts and fittings for all of the aforementioned
goods not included in other classes; downloadable specification
sheets, data sheets, computer reference manuals, user guides
and documents providing instruction in the use and operation
of various electronic digital devices” in International Class 9;3
VIA TELECOM for “computer hardware, namely, computer semiconductors,
computer chips, microprocessors, computer data processors,
integrated circuits, computer chipsets for use in transmitting
data to and from a central processing unit, computer main
boards, computer motherboards, computer interface boards,
circuit boards, multimedia accelerators boards, computer
graphic cards, serial and parallel interface cards for data
processing equipment in the form of printed circuits, computer
cards for connecting portable devices to computer networks,
central processing units, computer routers, computer hubs,
computer servers, computer network adapters, computer
switches, audiovisual receivers and converters, network access
server hardware, switches, routers, hubs, modem, video graphic
controllers, sound cards, video display cards, electric power
supplies, computer thermal and cooling devices, computer
input, output and storage devices, hard drives for computers,
computer memories, blank computer discs, computer disk
drives, computer accessory organizer storage cases,
magnetically encoded communication debit cards,
microcomputers, laptop computers, notebook computers; hand-
held devices, namely, personal digital assistants, PC tablets,
hand-held high-definition computer monitors for viewing video
programming, electronic personal organizers, Personal Digital
Assistants (PDA's), MP3 players; computer monitors, computer
keyboards, computer mice, computer printer, computer scanner,
computer peripherals and parts thereof; computer video

3 Registration No. 3173119 issued to VIA Technologies, Inc. (a California corporation) on
November 21, 2006; Section 8 affidavit (six-year) accepted.
Serial No. 79091666
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conferencing equipment, namely, terminals, videophones, video
processors, communications software for interacting over
wireless, circuit switched or packet switched voice, or packet
switched video networks; video output game machines for use
with televisions; interactive remote controls for computer game
equipment; computer hardware for telecommunications; radio,
telephone, television, computer, Internet, global positioning
system (GPS), microwave, satellite, broadband, radar, infrared,
Wi-Fi, digital and analog signal transmitters;
telecommunication devices, namely, Communication Services
(PCS) handsets, telephones, cellular telephones, digital
telephones, smart phones; sensory-activated interactive
computer kiosks used in retail, entertainment and hospitality
establishments; computer programs for controlling access to
and use of stand-alone network access server computers;
computer software, namely, software to manipulate,
disseminate, search and retrieve information; computer
operating software; computer firmware, namely, data
synchronization programs; application development tool
programs; computer software for the automatic configuration of
computer networks; software for communication and
telecommunication in local or global communications and
computer networks; diagnostic test software; security software
for information access control and secure communications;
software for use in database management; computer utility
software for use with computers; telecommunications
equipment, namely, devices for transmission and collecting
voice, data and video communications; computer peripherals;
computer software to maintain and operate computer systems;
computer software for wireless network communications and
connectivity; entertainment software, namely, computer game
software; electronic publications, namely, instructional
manuals featuring instruction in the field of computers,
telephony, education, graphics, animation, interactive
communications, computer games, movies and music videos;
downloadable software featuring instruction in the use and
operation of various electronic digital devices; computer
training manuals recorded on computer media; computer
operation manuals in electronic format and printed
instructional manuals sold as a unit” in International Class 9;4

4 Registration No. 3343749 issued to VIA Technologies, Inc. (a Taiwan corporation) on
November 27, 2007. No claim is made to the exclusive right to use the word “Telecom” apart
from the mark as shown.
Serial No. 79091666
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We note that the ‘119 registration (the second listed citation above) is owned by
a California corporation affiliated with, and having received a consent from, a
Taiwan corporation that is the owner of the ‘408 and ‘749 registrations. Applicant
argues the fact that the cited marks are owned by two distinct entities should be a
significant factor in our determination herein.
After the examining attorney made the refusal final, applicant appealed to this
Board. We affirm the refusal to register.
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Relationship of the Goods/Services
Applicant has stipulated, at least for purposes of our Section 2(d) analysis,
that its goods and services are related to the registered goods in Class 9. This
Serial No. 79091666
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critical du Pont factor thus weighs in favor of a finding of likelihood of confusion.
Accordingly, we turn our attention next to the similarity or dissimilarity of the
respective marks – applicant’s mark at issue compared with the three cited marks
owned by two registrants.
B. Comparison of the Marks
We begin our analysis of the similarity of the marks by noting that where the
goods and services of an applicant are “similar in kind and/or closely related” to the
goods of the cited registrants, the degree of similarity between the marks required
to support a finding of likelihood of confusion is not as great as in the case of
diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394
(TTAB 1987). Applicant has applied to register the mark TOMTOM VIA. The
registered marks are VIA TELECOM, , and VIA.
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. The test,
under this du Pont factor, 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 that confusion
as to the source of the goods offered under the respective marks is likely to result.
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
Serial No. 79091666
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marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). On the other hand, different features may be
analyzed to determine whether the marks are similar. Price Candy Company v.
Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In
fact, 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 a consideration of the marks in their entireties. In re National
Data Corp., 224 USPQ at 751. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In
this context, the examining attorney reminds us that within a composite mark, the
word portion is normally accorded greater weight than a design portion, and that
descriptive, disclaimed matter is usually less significant when comparing marks.
As to appearance and sound, we acknowledge that there are some clear dis-
similarities when one compares applicant’s mark with the cited marks. However, as
to connotation and overall commercial impression, the examining attorney contends
that the dominant portion of each registered mark is the word “VIA,” and that
applicant has simply taken this word and added its house mark, TOMTOM. By
contrast, applicant argues that its TOMTOM house mark must be deemed to be
the primary and most distinctive element of its composite mark, and hence this
portion provides its composite a significant distinguishing feature. On yet the other
hand, the examining attorney points out that when product marks are otherwise
Serial No. 79091666
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virtually the same, the addition of a house mark is more likely to add to the
likelihood of confusion than to distinguish the marks; it is likely that the two
products sold under such marks would be attributed to the same source. In re
Dennison Mfg. Co., 229 USPQ 141, 144 (TTAB 1986) (holding GLUE STIC for
general purpose adhesive in stick form likely to be confused with UHU GLU STIC for
adhesives for paper and stationery). As for applicant’s citation to Knight Textile
Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1315-17 (TTAB 2005) (applicant's
NORTON MCNAUGHTON ESSENTIALS trademark for women’s clothing is not
confusingly similar to opposer’s registered mark ESSENTIALS for similar goods),
in that case, the common term, “Essentials,” was found to be highly suggestive
and commonly adopted by third parties in connection with items of clothing.
However, there is nothing in the record on which we could base a similar finding
that the term “VIA” has a highly suggestive connotation.
Based upon evidence of record, the examining attorney also takes the position
that it is common for trademark owners to accentuate the product mark when
promoting goods and services, citing to examples such as Microsoft WORD, Ford
MUSTANG, Apple iPOD and Comcast XFINITY, etc. While there is no evidence in the
record reflecting on how applicant might choose to promote this product line, it
seems likely that those acquainted with applicant’s house mark, upon first
encountering the applied-for composite, would be inclined to view the word “VIA” as
its distinctive product mark. Given applicant’s relatively prominent positioning in
the market for GPS devices, it would certainly present the possibility of reverse
Serial No. 79091666
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confusion with regard to such customers later encountering registrant’s cited mark
used in connection with legally identical goods.
Accordingly, we find that applicant’s mark TOMTOM VIA is confusingly similar
to the cited marks, VIA TELECOM, , and VIA. as to connotation and
commercial impression.
C. Third-party Uses
Other than the three cited registrations, there is nothing in the record to
suggest that “Via” is a term used by any other third parties in the field of GPS
devices. However, throughout the prosecution of this application, in responses to
office actions and in its final brief on appeal, applicant has focused most of its
arguments on the fact that the cited marks are not all owned by the same legal
entity. Accordingly, the examining attorney and applicant have fully engaged in
litigating the sixth du Pont factor, which requires consideration of any evidence
pertaining to “the number and nature of similar marks in use on similar goods.”
In its brief, applicant argues as follows:
Although the consent to registration that was provided in
order to obtain Registration 3173119 states that VIA
Technologies, Inc., a California corporation, is an “affiliate”
of VIA Technologies, Inc., a Taiwan corporation, there is
nothing to indicate that [sic] in the Consent Agreement or
otherwise that those two companies can be considered
“related companies” or that there is a “unity of control” or that
the two entities constitute a “single source.” By submitting a
Consent Agreement and merely stating that they are
“affiliates,” the respective corporations are contradicting any
indication that there is unity of control and that they are a single
source.
Applicant’s brief at 7.
Serial No. 79091666
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The examining attorney takes applicant’s argument to the next step, to imply
“ … that the co-existence of these registrations – owned by affiliated companies and
explicitly consented to by each party – means that any other party, including itself,
is now permitted to register similar VIA marks. In other words, the consent given
by each [owner of the cited registered marks] to the other is imputed to every
subsequent applicant. Such an argument is clearly without merit.”
Actually, applicant’s argument seems to be that while it does not claim to have
any direct benefit from this earlier consent, the legal effect of such similar marks
issuing to unrelated parties is to expose a serious weakness in the cited
registrations permitting its quite different mark to register as well. However, the
examining attorney is correct in noting that this “argument is clearly without
merit.”
In its brief, applicant cites to § 1207.01(d)(viii) of the Trademark Manual of
Examining Procedure (TMEP), saying that whenever a consent agreement is
submitted, the examining attorney will consider the agreement as well as all the
other evidence of record in order to make a determination as to likelihood of
confusion. Of course, that section also counsels the examining attorney of the
importance of a consent agreement in any ex parte examination, as follows:
Accordingly, the Court of Appeals for the Federal Circuit
has indicated that consent agreements should be given
great weight, and that the USPTO should not substitute
its judgment concerning likelihood of confusion for the
judgment of the real parties in interest without good
reason, that is, unless the other relevant factors clearly
dictate a finding of likelihood of confusion.
Serial No. 79091666
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In keeping with this guidance, Trademark Examining Attorney Doritt L.
Carroll, when examining Application Serial No. 78495863 for VIA, accepted the
“judgment of the real parties in interest,” a consent agreement dated November 10,
2005, between Via Technologies, Inc. a Taiwan corporation, and Via Technologies,
Inc., a California corporation, which action led to the issuance of Registration No.
3173119.
Accordingly, from this record, we find that the cited “VIA” marks are strong
conceptually5 and commercially, and that a consent agreement between two
affiliated parties has not weakened the cited registrations in the manner applicant
has alleged.
D. Balancing the factors
In view of the fact that the cited VIA and VIA TELECOM marks are deemed to
be relatively strong product marks, that applicant’s composite mark is confusingly
similar, and that the goods and services are legally the same, we find that
applicant’s registration of the mark TOMTOM VIA is likely to cause confusion.
Decision: The refusal to register applicant’s mark TOMTOM VIA under Section
2(d) of the Lanham Act is hereby affirmed.

5 Applicant’s dictionary entry supports the conclusion that, at worst for registrants, the
term “Via” may be suggestive when used in connection with the identified goods.