Visia Inc.

Trademark Trial and Appeal Board

Jul 24, 2007

No. 78565368 (T.T.A.B. Jul. 24, 2007)

Mailed:
July 24, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Visia Inc.
________

Serial No. 78565368
_______

John X. Garred of Tucker Ellis & West LLP for Visia Inc.

Judith M. Helfman, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Grendel and Bergsman, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark depicted below.1

1 Serial No. 78565368, filed on February 11, 2005. The
application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a). In the application, 1995 is
alleged to be the date of first use of the mark anywhere, and
August 15, 1996 is alleged to be the date of first use of the
mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78565368
2
A description of the mark statement in the application
states that “the mark consists of stylized string of
letters VISIA.”
As amended, the Class 42 recitation of services in the
application reads as follows:

Information technology services, namely,
designing and implementing web sites for others;
hosting the web sites of others on a computer
server for a global network; designing graphical
user interface software for others; designing
software for application database integration for
use with Internet and intranet access; providing
temporary use of on-line non-downloadable
software for application and database
integration.

At issue in this appeal are the Trademark Examining
Attorney’s final refusals to register applicant’s mark on
the ground that the mark, as applied to the recited
services, so resembles two registered marks (owned by the
same owner) as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
The first cited registration is of the mark NVISIA
(registered in standard character form), for Class 42
services recited in the registration as “custom application
software development of object-oriented corporate computing
Ser. No. 78565368
3
solutions for others; object-oriented computer systems
integration services for others.”2
The second cited registration is of the mark depicted
below

for Class 42 services recited in the registration as
“custom application software development of object-oriented
corporate computing solutions for others; object oriented
architecture and computer systems integration services for
others.”3
Applicant and the Trademark Examining Attorney filed
main appeal briefs. After careful consideration of the
evidence of record and the arguments of counsel, we affirm
the refusals to register.
Initially, we reject applicant’s contention that, as
between applicant and the owner of the cited registrations,
applicant has priority of use of its mark. Such priority,

2 Registration No. 2957408, issued May 31, 2005.

3 Registration No. 2957411, issued May 31, 2005.
Ser. No. 78565368
4
even if established, is irrelevant in this ex parte
proceeding. Section 2(d) requires refusal of registration
if the applicant’s mark so resembles “a mark registered in
the Patent and Trademark Office” as to be likely to cause
confusion. The marks cited by the Trademark Examining
Attorney are registered marks. Applicant’s claim of
priority is an impermissible collateral attack on the
validity of the cited registrations which will not be heard
in this ex parte proceeding. See In re Calgon Corp., 435
F.2d 596, 598, 168 USPQ 278, 280 (CCPA 1971).
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
The first du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
Ser. No. 78565368
5
and overall commercial impression. Palm Bay Imports, Inc.,
supra. The test, under the first 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.
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).
Initially, we find that VISIA is, on this record, an
arbitrary or even coined term as applied to the services at
issue. It is the only term in applicant’s mark, and is a
prominent feature of the cited registered marks (especially
the cited design mark, in which VISIA is visually separated
from the “N”). The prominent presence of this arbitrary
and unusual term in each of the marks weighs heavily in
favor of a finding that the marks are similar rather than
dissimilar.
In terms of appearance, we find that applicant’s mark
is similar to each of the cited registered marks. The
marks are not identical in appearance, due to the presence
of the letter “N” in the cited registered marks and its
Ser. No. 78565368
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absence from applicant’s mark, and due to the slightly
different stylizations of the marks. However, we find that
the cited registered design mark looks very much like
applicant’s mark in that both marks are depicted in a
similarly stylized font. We note especially the similarity
in the way the final letter is displayed in each mark, with
both marks omitting the horizontal crossbar from the letter
“A”. As for the cited registered standard character mark,
it is settled that its scope of protection extends to all
reasonable manners of display. See, e.g., INB National
Bank v. Metrohost, 22 USPQ2d 1585 (TTAB 1992). We find
that one such reasonable manner in which the cited
registered mark might be displayed is the stylized manner
in which applicant’s mark is displayed. This finding is
further supported by the fact that registrant already has
registered the design version of its mark which displays
the mark in a stylization similar to applicant’s. Viewing
the marks in their entireties, we find that they are
similar in terms of appearance.
In terms of sound, we find that the marks are similar.
The only difference is the presence of the letter “N” at
the start of each of the registered marks, which precludes
a finding that the marks are identical in sound. However,
we find that when the marks are compared in their
Ser. No. 78565368
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entireties, the fact that each of the marks includes the
identically-pronounced term VISIA outweighs any difference
in sound arising from the additional syllable “en” in the
cited registered marks. Considered in their entireties,
the marks are similar in terms of sound.
In terms of connotation, we find that the marks are
essentially identical. As noted above, on this record
VISIA appears to be an arbitrary or even coined word. To
the extent that it has any connotation as applied to the
relevant services, that connotation would be the same in
both applicant’s mark and in the cited registered marks.
The additional letter “N” in the cited registered marks
does not negate the similarity in connotation which arises
from the presence of VISIA in each of the respective marks.
In terms of overall commercial impression, we find
that the marks are similar rather than dissimilar. Even
assuming that purchasers, with their imperfect
recollections, are able to remember and distinguish between
the two marks per se, we find that they still are likely to
assume that services advertised and rendered under the
respective marks originate from the same or a related
source. VISIA is an unusual arbitrary or coined term; its
arbitrariness as a source indicator is likely to lead
Ser. No. 78565368
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purchasers to assume that its appearance in both marks is
due to the existence of a source connection or affiliation.
Comparing the marks in their entireties in terms of
appearance, sound, connotation and overall commercial
impression, we find that applicant’s mark is highly similar
to each of the cited registered marks. The first du Pont
factor clearly weighs in favor of a finding of likelihood
of confusion.
We turn next to the second du Pont factor, which
requires us to determine the similarity or dissimilarity of
applicant’s services, as identified in the application, and
the services recited in the cited registrations. It is
settled that it is not necessary that the respective
services be identical or even competitive in order to
support a finding of likelihood of confusion. That is, the
issue is not whether consumers would confuse the services
themselves, but rather whether they would be confused as to
the source of the services. It is sufficient that the
services be related in some manner, or that the
circumstances surrounding their use be such that they would
be likely to be encountered by the same persons in
situations that would give rise, because of the marks used
thereon, to a mistaken belief that they originate from or
are in some way associated with the same source or that
Ser. No. 78565368
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there is an association or connection between the sources
of the respective services. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
In its brief, applicant’s only argument on this issue
consists of a mere repetition of the respective services as
recited in the application and registrations, followed by
the wholly conclusory statement that these services
“clearly are not similar enough” to support a finding of
likelihood of confusion. We disagree with this unsupported
assertion. It is apparent from the respective recitations
of services themselves, see Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002),
that both applicant’s and registrant’s services include or
involve the designing or developing of application software
used in connection with the integration of computer
databases, applications and systems.
In addition to this similarity which is apparent on
the faces of the recitations, we note that the Trademark
Examining Attorney has made of record eleven third-party
registrations in which the recitations of services include
both the type of services recited in applicant’s
Ser. No. 78565368
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application and the type of services recited in the cited
registrations. See, e.g., Reg. No. 2847947, in which the
Class 42 recitation of services includes, inter alia,
“computer object-oriented programming services for others”;
“web-based consultation services in the field of computer
software design and generation”; “hosting the web sites of
others on a computer server for a global computer network”;
“computer services, namely, designing and implementing web
sites for others”; and “computer consultation services
featuring the integration of back-office computer
functions.” Likewise, the Class 42 recitation of services
in Reg. No. 2679753 includes, inter alia, “computer
services, namely, computer system integration and
consultation”; “computer software design for others”; and
“web site design for others.”
Based on this evidence, we find that applicant’s
services as recited in the application are similar to the
services recited in each of the cited registrations. The
second du Pont factor weighs in favor of a finding of
likelihood of confusion.
We likewise find that applicant’s and registrant’s
computer services would be marketed in the same trade
channels and to the same classes of purchasers. Nothing in
the respective registrations of services indicates
Ser. No. 78565368
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otherwise. The third du Pont factor accordingly weighs in
favor of a finding of likelihood of confusion.
We are not persuaded by applicant’s argument, under
the fourth du Pont factor, that the purchasers of
applicant’s and registrant’s respective services
necessarily are knowledgeable and sophisticated purchasers
who would exercise more than an ordinary degree of care in
purchasing the services. Even if registrant’s “corporate
computing solutions” might indicate that registrant’s
customers are corporations, such corporations obviously
would include corporations of all sizes and levels of
sophistication. Moreover, applicant’s development and
hosting of web sites for others are services which would be
marketed to and purchased by ordinary consumers and
corporations wanting to have a web site. Applicant argues
that the services involved herein are “expensive,” but has
submitted no evidence in support of that contention. In
its brief, applicant contends that its services “range in
price from approximately, several hundred dollars to tens
of thousands of dollars.” We do not deem services which
might cost only “several hundred dollars” to be especially
expensive services, for purposes of the fourth du Pont
factor. We find that the fourth du Pont factor does not
Ser. No. 78565368
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weigh in applicant’s favor in this case, but instead weighs
in favor of a finding of likelihood of confusion.
Applicant argues that there has been no actual
confusion between applicant’s mark and registrant’s marks
despite contemporaneous use of the marks since 2000. There
is no evidence in the record to support applicant’s claim.
In any event, the absence of actual confusion is not of
particular probative value in an ex parte case. See In re
Majestic Distilling Co., supra. We have not heard from
registrant on the question, nor can we determine from the
record that there has been any significant opportunity for
actual confusion to have occurred.
Taking into account all of the evidence as it pertains
to the relevant du Pont factors, we conclude that a
likelihood of confusion exists. To the extent that any
doubts might exist as to the correctness of this conclusion
(and we have none), we resolve such doubts against
applicant. See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In
re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984).
Decision: The refusals to register are affirmed.