Warp Mechanics, Ltd.

Trademark Trial and Appeal Board

Jul 17, 2013

No. 85183788 (T.T.A.B. Jul. 17, 2013)

Mailed: 7/17/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Warp Mechanics, Ltd.
________

Serial No. 85183788
_______

Ashok Tankha of Lipton, Weinberger & Husick for Warp Mechanics,
Ltd.

Deborah Meiners, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Gorowitz and Hightower,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Warp Mechanics, Ltd. filed, on November 23, 2010, an
application to register the mark WARP MECHANICS (in standard
characters) for “computer hardware; computer hardware for
upload, storage, retrieval, download, transmission and delivery
of digital content; computer networking hardware” in
International Class 9. The application was filed under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a), with applicant
alleging first use anywhere and first use in commerce on
November 17, 2010.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
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The trademark examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with
applicant’s goods, so resembles the previously registered mark
WARP (in typed form) for “computer software for creating,
designing and/or simulation of programmable integrated
circuitry; semi conductor; computer hardware; integrated circuit
devices and programmable integrated circuit devices” in
International Class 9,1 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Before turning to the substantive merits of the appeal, we
direct our attention to an evidentiary matter. Applicant
attached numerous exhibits to its brief (Exs. A-P). The
examining attorney, in her brief, objected to Exhibits A and B
(excerpts of two websites wherein registrant’s goods are
described) because they were not timely made of record prior to
the appeal. The objection is sustained. Trademark Rule
2.142(d) provides that the application record should be complete
prior to the filing of an appeal, and the Board will ordinarily
not consider additional evidence filed with the Board after the
appeal is filed. Because Exhibits A and B were not timely
introduced during the prosecution of the application, this

1 Registration No. 2394590, issued October 17, 2000; renewed.
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evidence is stricken from the record, and it has not been
considered in making our decision. Given the nature of this
evidence, however, we hasten to add that consideration of it
would not have changed the result in this case.
Applicant states “[a]lthough there is some relation between
the goods of the parties” (Brief, p. 10), it argues that its
goods are directed to sophisticated purchasers in specific niche
markets such as media, entertainment and health sciences,
whereas registrant’s goods are marketed to different industries.
Applicant also points out that its goods are expensive, while
registrant’s goods are relatively inexpensive. According to
applicant, these factors mitigate against the likelihood of
confusion. As to the marks applicant contends that they are
“entirely different.” (Brief, p. 12). In urging that the
refusal to register be reversed, applicant introduced literature
about applicant’s and registrant’s respective products; a price
quote and invoice for applicant’s goods; copies of third-party
registrations; a client “testimonial”; a copy of registrant’s
specimen; and photographs of applicant’s product packaging.
The examining attorney maintains that the marks are highly
similar and that the goods are identical in part as to “computer
hardware,” and are otherwise closely related. In support of the
refusal the examining attorney submitted excerpts of third-party
websites, and third-party registrations.
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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 issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and
the similarities between the goods. See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks”).
We first consider the du Pont factor regarding the
similarity/dissimilarity between the goods. Contrary to the
gist of some of applicant’s arguments and evidence on this
point, when comparing the goods, the respective identifications
in the application and the cited registration control the
analysis. In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB
2011). Applicant’s identification of goods includes “computer
hardware,” which is legally identical to registrant’s “computer
hardware.” Not only do the goods specifically overlap as to
“computer hardware,” but the broadly worded terminology
“computer hardware” in registrant’s identification of goods
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encompasses the more specific type of computer hardware also
identified in applicant’s identification of goods. See, e.g.,
In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009). See
also TMEP § 1207.01(a)(iii) (2013) (“If the cited registration
describes goods or services broadly, and there is no limitation
as to their nature, type, channels of trade, or class or
purchasers, it is presumed that the registration encompasses all
goods or services of the type described, that they move in all
normal channels of trade, and that they are available to all
classes of purchasers.”). Further, the goods are otherwise
closely related computer hardware (and software) items. See,
e.g., Octocom Systems Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) (likelihood of
confusion found between marks for computer hardware and computer
software); and In re Teradata Corp., 223 USPQ 361 (TTAB 1984).
Because the goods identified in the application and the
cited registration are in-part identical, we must presume that
the channels of trade and classes of purchasers are the same.
We also note that there are no limitations in either applicant’s
or registrant’s identification of goods. See Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods, and
the lack of any restrictions in the identifications thereof as
to trade channels and purchasers, these clothing items could be
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offered and sold to the same classes of purchasers through the
same channels of trade.”); and In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally
identical, they must be presumed to travel in the same channels
of trade, and be sold to the same class of purchasers.”).
In the face of well-established case law, applicant makes
several feeble attempts to distinguish the goods, which the
examining attorney ably dismisses in her brief. (Brief, pp. 9-
11). Principally, applicant relies upon extrinsic evidence to
differentiate between the goods; however, an applicant may not
restrict the scope of the goods covered in the cited
registration by argument or extrinsic evidence. In re Bercut-
Vandervoort & Co., 229 USPQ2d 763, 764 (TTAB 1986). Thus, any
specific differences between the actual nature of the goods, or
the prices of the goods (applicant’s goods assertedly are
expensive whereas registrant’s goods are significantly less
expensive), are irrelevant in our analysis. Absent any
limitation, we presume that applicant’s and registrant’s
“computer hardware” encompasses all types, including lower-cost
hardware.
Lest there be any question on the close relationship
between the involved goods, the examining attorney’s evidence of
several use-based third-party registrations show that the same
entity has registered the same mark for goods of the types
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identified in the application and cited registration. “Third-
party registrations which cover a number of differing goods
and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in use on
a commercial scale or that the public is familiar with them, may
nevertheless have some probative value to the extent that they
may serve to suggest that such goods or services are of a type
which may emanate from a single source.” In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864
F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The examining attorney also submitted excerpts of third-
party websites showing that it is common for the same entity to
offer the types of goods and services at issue in this appeal,
often under the same mark.
The legal identity between the goods in part (or otherwise
close relationship), and the presumed overlap in trade channels
and classes of purchasers are factors that weigh heavily in
favor of a finding of likelihood of confusion.
We next turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. In
re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In
comparing the marks, we are mindful that the test is not whether
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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 so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086
(Fed. Cir. June 5, 1992). Moreover, in comparing the marks, we
are mindful that where, as here, the goods are legally identical
in part, the degree of similarity necessary to find likelihood
of confusion need not be as great as where there is a
recognizable disparity between the goods. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007); and Schering-Plough HealthCare
Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB
2007).
It is well settled that one feature of a mark may be more
significant than another, and it is not improper to give more
weight to this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing
improper in stating that, for rational reasons, more or less
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weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the
marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”).
With respect to applicant’s mark, purchasers in general are
inclined to focus on the first word or portion in a trademark,
in this case, WARP. Presto Products, Inc. v. Nice-Pak Products,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first
part of a mark which is likely to be impressed upon the mind of
a purchaser and remembered”). See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at
1692. Lest there be any doubt, applicant itself often refers to
its mark by the shortened form WARP (see product literature at
Brief, exs. F-M). Applicant has adopted the entirety of
registrant’s mark and merely added a suggestive word. The
addition of MECHANICS in applicant’s mark does not distinguish
the marks, especially when the marks are applied to identical
goods. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1260-61 (Fed. Cir. 2010); In re Chatam Int’l Inc.,
380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); and In re
Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009).
In sum, the marks are very similar in sound, appearance,
meaning and overall commercial impression. The similarity
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between the marks WARP and WARP MECHANICS is a factor that
weighs in favor of a finding of likelihood of confusion.
In an attempt to show that the cited mark is weak,
applicant submitted four third-party registrations of WARP
formative marks, only one of which is currently subsisting, and
one third-party application for the mark WARP, which stands
abandoned. This evidence does not prove that WARP is a weak
mark in the computer industry. Absent evidence of actual use,
third-party registrations have little probative value because
they are not evidence that the marks are in use on a commercial
scale or that the public has become familiar with them. Smith
Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462,
463 (CCPA 1973) (the purchasing public is not aware of
registrations reposing in the U.S. Patent and Trademark Office);
and Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542, 1545 (Fed. Cir. 1992) (“As to strength of a mark, however,
registration evidence may not be given any weight.”); In re
Brown-Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB 2006)
(expired or cancelled registrations are evidence only of the
fact that the registrations issued); and Glamorene Prods. Corp.
v. Earl Grissmer Co., Inc., 203 USPQ 1090, 1092 n.5 (TTAB 1979)
(applications are evidence only of the fact that the
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applications were filed and nothing else). This factor is
neutral.
Applicant contends that its goods are bought by
sophisticated purchasers, as evidenced by the nature and cost of
its goods. Even assuming that a careful selection is involved,
it is settled that even sophisticated purchasers are not immune
from source confusion, especially in cases such as the instant
one involving very similar marks and in part identical goods.
See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA
1970) (“Human memories even of discriminating purchasers...are
not infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB
1988). We find that the similarity between the marks and the
identity or otherwise close relationship between the goods sold
thereunder outweigh any presumed sophisticated purchasing
decision. See HRL Associates, Inc. v. Weiss Associates, Inc.,
12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)
(similarities of goods and marks outweigh sophisticated
purchasers, careful purchasing decision, and expensive goods).
Applicant states that there is no evidence of any actual
confusion. Applicant’s assertion, in this ex parte proceeding,
is entitled to little weight. See In re Majestic Distilling
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Co., Inc., 65 USPQ2d at 1205 (“uncorroborated statements of no
known instances of actual confusion are of little evidentiary
value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177
USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony
of applicant’s corporate president’s unawareness of instances of
actual confusion was not conclusive that actual confusion did
not exist or that there was no likelihood of confusion); In re
Binion, 93 USPQ2d 1531, 1536 (TTAB 2009); In re 1st USA Realty
Professionals Inc., 84 USPQ2d 1581, 1588 (TTAB 2007); and In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any
event, the record is devoid of probative evidence relating to
the extent of use of applicant’s and registrant’s marks and,
thus, whether there have been meaningful opportunities for
instances of actual confusion to have occurred in the
marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Accordingly, the du Pont
factor of the length of time during and conditions under which
there has been contemporaneous use of the marks without evidence
of actual confusion is considered neutral.
We have carefully considered all of the evidence made of
record pertaining to the issue of likelihood of confusion, as
well as all of the arguments related thereto, including any
evidence and arguments not specifically discussed in this
opinion. We conclude that purchasers, even sophisticated ones,
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familiar with registrant’s “computer software for creating,
designing and/or simulation of programmable integrated
circuitry; semi conductor; computer hardware; integrated circuit
devices and programmable integrated circuit devices” sold under
the mark WARP would be likely to mistakenly believe, upon
encountering applicant’s mark WARP MECHANICS for “computer
hardware; computer hardware for upload, storage, retrieval,
download, transmission and delivery of digital content; computer
networking hardware,” that the goods originated from or are
associated with or sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. 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 refusal to register is affirmed.