VisualGold. com, Inc.

Trademark Trial and Appeal Board

Apr 3, 2002

No. 76023196 (T.T.A.B. Apr. 3, 2002)

4/3/02

Paper No. 10
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re VisualGold.com, Inc.
________

Serial No. 76/023,196
_______

Michael S. Sherrill of Sherrill Law Offices
for VisualGold.com, Inc.

Brendan Regan, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Cissel, Wendel and Bucher, Administrative Trademark
Judges.

Opinion by Wendel, Administrative Trademark Judge:
VisualGold.com, Inc. has filed an application to
register the mark IMAGIST for “computer programs for use in
enhancing and compressing electronic images transmitted via
a global computer network.”1

1 Serial No. 76/023,196, filed January 27, 2000, based on an
allegation of a bona fide intention to use the mark in commerce.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 76/023,196
2
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark IMAGIST, which is registered for
“computer hardware and software imaging processing and
analyzing system; namely, work station, interface
electronics, disk drives, optical disk drives, and image
input devices including cameras and monitors for use with
light and electron microscopy.”2
The refusal has been appealed and applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 factors that are
relevant in view of the evidence of record. Two key
considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods with which the marks are being
used, or are intended to be used. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976); In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999).

2 Registration No. 1,781,134, issued July 13, 1993, Section 8 &
15 affidavits accepted and acknowledged, respectively.
3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 76/023,196
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Insofar as the marks are concerned, there is no
question but that the marks are identical. There is no
difference whatsoever in overall commercial impression, and
applicant has made no argument to the contrary.
Thus, the major issue for consideration here is the
similarity or dissimilarity of the respective goods.
Before making this comparison, we note that in general the
greater the degree of similarity in the marks, the lesser
the degree of similarity that is required of the products
on which they are being used, or are intended to be used,
in order to support a holding of likelihood of confusion.
If the marks, as here, are the same, it is only necessary
that there be a viable relationship between the goods in
order to find confusion likely. See In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Moreover, it is not necessary that the goods of applicant
and registrant be similar or even competitive to support a
holding of likelihood of confusion. It is sufficient if
the respective goods are related in some manner and/or that
the conditions surrounding their marketing are such that
they would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that
they emanate from, or are associated with, the same source.
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See In re Albert Trostel & Sons, 29 USPQ2d 1783 (TTAB 1993)
and the cases cited therein.
Applicant contends that the goods of applicant are
quite different in nature from those of registrant and are
used for different purposes. Applicant argues that the
specific function of applicant’s goods is to “provide
quality compression and enhancement of an existing image to
be transmitted and viewed over a global computer network,”
whereas the function of registrant’s goods is to “generate
am image created with an electron microscope.” (Brief p.
5). Applicant further argues that its goods are used by
Web developers, Internet service providers and content
providers to enhance and compress images to be used in Web-
based applications, while registrant’s goods would be used
in conjunction with electron microscopes, which are highly
sophisticated pieces of scientific equipment and are
typically purchased by universities, laboratories, research
hospitals and large corporations.
The Examining Attorney argues that not only are both
applicant’s and registrant’s software concerned with
digital images, but also, because applicant has not made
any specification as to field of use in the identification
of its goods, it can be assumed that applicant’s goods may
be used in registrant’s particular field of electron
Ser No. 76/023,196
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microscopy. He further argues that the fact that
applicant’s images are to be “transmitted via a global
computer network” fails to distinguish them from
registrant’s goods or to define a particular, discrete
field of use. Finally, he points out that, by definition,
the “image enhancing” function of applicant’s goods is
virtually synonymous with the “image processing” function
of registrant’s goods; both involve image improvement.
While both applicant’s and registrant’s goods are
software and both involve image processing or improvement,
our analysis clearly cannot stop at this point.
Registrant’s software is specifically directed to use in
conjunction with light and electron microscopy and the
images coming from such a source. Applicant’s software, by
contrast, deals with pre-existing images which are to be
transmitted via a global computer network. The problem
with applicant’s attempt to distinguish the goods on the
latter basis, however, is that, as pointed out above, the
goods of applicant and registrant need not be the same or
competitive. The question is simply whether there is a
viable relationship between the goods such that the use of
the same mark on both would lead prospective purchasers to
believe, mistakenly, that the same source is responsible
for both.
Ser No. 76/023,196
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Here we find such a relationship exists in that there
is no reason why, as identified, the software of applicant
could not be used to further enhance and compress the
images generated by registrant’s software for ultimate
transmission via a global computer network. Thus, if the
respective products bearing the identical mark IMAGIST were
encountered by similar purchasers, these persons might well
assume that these were companion products emanating from
the same source.
Although applicant attempts to distinguish the
channels of trade and the relevant buyers for the
respective software products, there are no restrictions in
the application which would preclude the sale of
applicant’s goods to institutions involved with electron
microscopy as well as to the Web-associated purchasers
listed by applicant. See Kangol Ltd. v. KangaROOS U.S.A.
Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992)(if
there are no restrictions in the application, it must be
presumed that the goods travel in all the normal channels
of trade for goods of this nature). While registrant’s
software may be limited in application and channels of
trade, the same does not hold true for applicant’s.
Applicant also argues that the purchasers of both
types of software are sophisticated knowledgeable
Ser No. 76/023,196
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professionals who would exercise careful consideration in
their purchases. We find no evidence of record, however,
to support these assertions. Furthermore, even careful
purchasers are not immune from source confusion,
particularly when the marks used on the products are
identical and a viable relationship exists between the
goods. See In re Total Quality Group Inc., 51 USPQ2d 1474
(TTAB 1999).
Accordingly, we find confusion likely. To the extent
that there may be any remaining doubt, we follow the well-
established principle that any doubt regarding likelihood
of confusion must be resolved in favor of the registrant.
See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
is affirmed.
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