Xelerated AB

Trademark Trial and Appeal Board

Feb 24, 2005

No. 76134524 (T.T.A.B. Feb. 24, 2005)

Mailed:
February 24, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Xelerated AB, assignee of Xelerated Packet Devices AB
________

Serial No. 76134524
_______

Keith E. Danish, Catherine R. Keenan and Mark I. Peroff of
Kirkpatrick & Lockhart LLP for Xelerated AB, assignee of
Xelerated Packet Devices AB

Nicholas K.D. Altree, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______

Before Seeherman, Hairston and Bottorff, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Xelerated AB, assignee of Xelerated Packet Devices AB,1
has appealed from the final refusal of the Trademark
Examining Attorney to register XELERATED SYSTEMS, with the

1 The application was filed in the name of Xelerated Networks
AB. During the course of prosecution applicant changed its name
to Xelerated Packet Devices AB. The business of this company,
including the trademark XELERATED SYSTEMS, was subsequently
assigned to Xelerated AB.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76134524
2
word SYSTEMS disclaimed, as a mark for the following goods
and services:
computer network components for
hardware-based systems, namely, data
switches and routers’ (Class 9); and

telecommunication and data
communications services, namely,
communications tasks, namely, data
packet processing, namely, sending
bundles of data through a network to a
remote location; routing, namely, voice
and data transmission routing;
voice/data convergence, namely
electronic transmission of simultaneous
voice and data over a single network
(Class 38).2

Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), in view of
registrations for the marks ACCELERATED NETWORKS3 and
ACCELTERATED NETWORKS and Design,4 as shown below, both
owned by the same party for “computer network hardware that
enables the bundling of voice and data telecommunications
services over a single broadband access network.” The word
NETWORKS has been disclaimed in both registrations. It is
the Examining Attorney’s position that applicant’s mark so
resembles these registered marks that, if it is used on

2 Application Serial No. 76134524, filed September 25, 2000 and
asserting a bona fide intention to use the mark in commerce.
3 Registration No. 2377206, issued August 15, 2000.
4 Registration No. 2377205, issued August 15, 2000.
Ser No. 76134524
3
applicant’s identified goods, it is likely to cause or
mistake or to deceive.5

Both applicant and the Examining Attorney have filed
briefs. Applicant did not request an oral hearing.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,

5 Applicant’s application has undergone a rather convoluted
examination. In the first Office action the Examining Attorney
advised applicant that a search of the Office records had found
no conflicting registrations. In the second action, however, she
refused registration on the ground likelihood of confusion with
the two registrations recited above, as well as a third
registration. A second Examining Attorney then took over
responsibility for the application, and issued a third Office
action in which he withdrew the refusal based on likelihood of
confusion and issued a final refusal based solely on a
requirement for an acceptable identification of goods. Applicant
responded with a proposed identification, and the examination of
the application was then transferred to a third Examining
Attorney (the attorney who is now handling this appeal). The
present Examining Attorney refused registration on the ground of
likelihood of confusion with the two registrations which form the
issue in this appeal. A final refusal of registration
subsequently followed.
Ser No. 76134524
4
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
It is on the basis of these two du Pont factors,
similarity of the marks and of the goods/services that the
Examining Attorney takes the position that confusion is
likely. With respect to the goods and services, the
Examining Attorney asserts that applicant’s identified
network hardware in the nature of “switches and routers” is
encompassed within the broadly identified “computer network
hardware that enables the bundling of voice and data
telecommunications services over a single broadband
network.” He also points to applicant’s data packet
processing, which entails “sending bundles of data through
a network” and its voice/data convergence services, namely
“electronic transmission of simultaneous voice and data
over a single network” and asserts that applicant’s
bundling or convergence of voice and data into a single
network is the function of the registrant’s goods. The
record shows that a network router is a “network device
that examines the network addresses within a given
Ser No. 76134524
5
protocol, determines the most efficient pathway to the
destination, and routes the data accordingly,” and a
network switch is “the device used to direct packets in
packet-switched networks, usually located at one of the
nodes on the network’s backbone.”6
Applicant has not disputed the relatedness of the
goods and services, but has instead discussed the marks,
and most particular the scope of protection to be accorded
applicant’s mark and the sophistication of the purchasers.
Turning then to the marks, the Examining Attorney
asserts that ACCELERATED is the dominant element in the
cited marks, and XELERATED is the dominant element in
applicant’s mark. We agree that the descriptive and
disclaimed words NETWORKS and SYSTEMS in the respective
marks have little source-identifying value. We also agree
that the words ACCELERATED NETWORK in Registration No.
2377205 are more likely to be remembered than the abstract
triangular design element because it is by this word
portion that consumers will refer to and call for the

6 www.psps.com/pages_frames/tech_/telecommunications_dictionary.
htm. The Examining Attorney merely quoted the definition in the
body of the Office action, and did not submit a printout from the
on-line dictionary, which would have been the better practice.
However, because the applicant did not object as to the accuracy
of the definition, we have considered it.

Ser No. 76134524
6
goods. See In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987).
Having said this, however, we cannot, in determining
the issue of likelihood of confusion, compare the marks
only on the basis of the words ACCELERATED/XELERATED and,
because these words are pronounced the same, find that the
marks are confusingly similar. We must also, as applicant
has pointed out, take into consideration the strength of
the cited marks or, in other words, determine whether it is
entitled to a broad or a limited scope of protection.
In this connection, applicant has submitted evidence
to show that the word “accelerated” or variations thereof
is used in connection with computer networks. The term is
used in identifications of goods and services, e.g.,
“computer hardware, computer peripherals and computer
software for use in securing and/or accelerating network
traffic between computer networks that operate on different
protocols”;7 “integrated circuits which accelerate data
packet transmission in high speed networks”;8 and “computer
services, namely providing accelerated access to electronic
communications networks.”9 Applicant has even provided

7 Application Serial No. 78029357.
8 Registration No. 2167319.
9 Registration No. 2600461.

Ser No. 76134524
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evidence of the generic usage of “network accelerator,”
i.e., it is used as an identification in Registration No.
2504890, and it is used in an article from “elibrary.com,”
dated July 7, 1998 and entitled “Softcom Introduces the
First Network Accelerator.”
Applicant has also submitted evidence of third-party
registrations for marks which contain ACCELERATOR or
ACCELERATED or variations thereof. See, for example,
ACCELURATOR for “computer software for the communications
industry, namely, programs for real time data collection
and real time applications for updating information for
telecommunications network and business management systems
on a continual basis”;10 ACCELERATING THE INTERNET for
“computer hardware used to increase security and to enhance
the capability and/or performance of exchanging
information”;11 computer software and hardware of optimizing
network performance over existing networks consisting of
wide and local area networks and the global computer
information network”;12 and XCELERATIA for “computer
software for use in performance enhancement of personal
computer systems or computer networks.”13

10 Registration No. 2108370.
11 Registration No. 2351009 (Supplemental Register).
12 Registration No. 2714458.
13 Registration No. 2574150.
Ser No. 76134524
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Finally, applicant has submitted evidence referring to
one of the registrant’s own systems which discusses using
the system “to accelerate the high-speed data delivery of
services like DSL to its business and residential
customers.”
In view of the foregoing evidence, it is clear that
consumers for applicant’s goods and services view
ACCELERATED as a highly suggestive or descriptive term for
computer products and services, including
telecommunications goods and services and those involving
computer networks. As a result, they will not assume that
all marks that contain the word ACCELERATED or a variation
thereof indicate a single source for the goods and
services.
In this commercial environment, the differences in the
marks, and in particular, the distinctive way that
XELERATED in spelled, is sufficient to distinguish
applicant’s marks from those of registrant. Not only does
XELERATED give applicant’s mark a different appearance, but
the differing words SYSTEMS and NETWORKS in the marks,
despite their descriptive significance, gives the marks
different connotations and commercial impression. We
acknowledge the Examining Attorney’s point that in certain
circumstances similarity in pronunciation is a sufficient
Ser No. 76134524
9
basis on which to find likelihood of confusion, but in this
case, given the highly suggestive nature of the word
ACCELERATED, and the limited scope of protection to be
accorded the cited registrations, similarity in
pronunciation alone is not sufficient.
The du Pont factor of the conditions under which and
purchasers to whom sales are made also favors a finding of
no likelihood of confusion. Registrant’s goods and
applicant’s goods and services are obviously offered to
sophisticated consumers who are knowledgeable about their
industry. Such consumers, as indicated above, are aware of
the suggestive or descriptive significance of the word
ACCELERATED, and are not likely to assume that all marks
containing this word identify a single source. Further,
these goods and services are bought with care and
deliberation. Under such circumstances, purchasers will
certainly note the differences in the marks, and
particularly the unusual appearance caused by applicant
beginning its mark with an “X.”
Decision: The refusal of registration is reversed.