Amaranth Networks, Inc.

Trademark Trial and Appeal Board

Jan 30, 2003

No. 75750581 (T.T.A.B. Jan. 30, 2003)

Mailed:
January 30, 2003
Paper No. 18
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Amaranth Networks, Inc.
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Serial No. 75/750,581
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Mark B. Harrison and Jacqueline Levasseur Patt of Venable
Baetjer Howard & Civiletti, LLP for Amaranth Networks, Inc.
Susan Kastriner Lawrence, Trademark Examining Attorney, Law
Office 116 (Meryl L. Hershkowitz, Managing Attorney).
_______
Before Walters, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Amaranth Networks, Inc. seeks registration on the
Principal Register for the mark AMARANTH NETWORKS as used in
connection with “consulting services, namely consulting with
small businesses and start-up companies with respect to
computer servers and networking equipment,” in International
Class 35, and in connection with “hosting the web sites of
others on a computer server for a global computer network;
graphic design services; computer services, namely web sites
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/750,581
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design and development, software programming for others,” in
International Class 42.1
The Trademark Examining Attorney has refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used on
applicant’s services, so resembles the following registered
marks, all owned by the same registrant, as to be likely to
cause confusion, to cause mistake, or to deceive:
AMERANTH Voice and data communications systems, data
processing systems, inventory and cash
management systems, security systems, and
control systems, comprising computer
hardware, transmitters and receivers [in
International Class 9] 2
AMERANTH Providing the integration of voice and data
communications systems, data processing
systems, inventory and cash management
systems, security systems, and control
systems, comprising computer hardware,
transmitters and receivers [in
International Class 41]3
AMERANTH
TECHNOLOGY
SYSTEMS
Integration of voice and data
communications systems, data processing
systems, inventory and cash management
systems, security systems, and control
systems, all comprised of computer
hardware, transmitters and receivers [in
1 Application Serial No. 75/750,581, filed on July 12, 1999, is
based upon use in commerce under Section 1(a) of the Lanham Act.
February 20, 1998 is alleged to be the date of first use of the
mark anywhere and the date of first use of the mark in commerce.
The word “Networks” is disclaimed apart from the mark as shown.
2 Registration No. 2,308,861, issued on January 18, 2000.
3 Registration No. 2,331,358, issued on March 21, 2000.
Serial No. 75/750,581
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International Class 42]4
AMERANTH
TECHNOLOGY
SYSTEMS
Voice and data communications systems, data
processing systems, inventory and cash
management systems, security systems, and
control systems, all comprised of computer
hardware, transmitters and receivers [in
International Class 9]5
When the refusal was made final, applicant filed a
notice of appeal and two requests for reconsideration. The
Trademark Examining Attorney rejected both requests for
reconsideration. Applicant and the Trademark Examining
Attorney filed appeal briefs, and applicant filed a reply
brief. Applicant did not request an oral hearing.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood of
confusion. See In re E. I. du Pont de Nemours and Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the
evidence of record on these factors, we keep in mind that
“[t]he 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.”
4 Registration No. 2,371,397, issued on July 25, 2000, having a
disclaimer of the words “Technology Systems” apart from the mark as
a whole.
5 Registration No. 2,398,194, issued on October 24, 2000, having
a disclaimer of the words “Technology Systems” apart from the mark
as a whole.
Serial No. 75/750,581
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Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We turn first to a consideration of the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, and connotation.
The test for likelihood of confusion is not whether the
marks can be distinguished when compared side-by-side.
Hence, the addition, deletion or substitution of words may
not necessarily preclude a likelihood of confusion. Here,
the dominant portion of applicant’s mark is the leading word,
“Amaranth.” Applicant has agreed to disclaim the highly
descriptive, if not generic, word “Networks” apart from the
mark as shown. Similarly, the sole portion of two of
registrant’s cited marks is “Ameranth.” For the other two
cited registrations having composite marks, the highly
descriptive, if not generic, words “Technology Systems” are
disclaimed apart from the marks as a whole. The difference
in appearance between registrant’s marks and applicant’s mark
is negligible given that “Amaranth” and “Ameranth” differ
only as to the substitution of one soft vowel for another
vowel deep within an eight-letter word.
As to pronunciation, in the ordinary course of speech,
it would be difficult for the speaker to enunciate, or the
Serial No. 75/750,581
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listener to detect, a difference in the pronunciation of the
words “Amaranth” and “Ameranth.”
As to connotation, even accepting applicant’s argument
that the word “Amaranth” as used within its composite mark is
a dictionary word, while registrant’s spelling of “Ameranth,”
as used in its four cited registrations, appears to be a
coined word, we suspect most consumers will not divine a
difference in the meaning of these two slightly differently
spelled words; nor is the average consumer likely to be
familiar with the English-language word “Amaranth” in any
context. Moreover, should the average consumers of these
respective services know the meaning of the word “Amaranth”
and notice this subtle replacement of a single letter in
registrant’s marks, both words appear to be arbitrary as
applied to the identified goods and/or recited services.
Hence, as to connotation, this slight and subtle difference
cannot have a dispositive effect on our analysis of
confusingly similar marks.
Accordingly, considering applicant’s mark, and the four
cited marks of registrant, in their entireties, we find that
the marks have substantially similar overall commercial
impressions; and that confusion as to source or sponsorship
is likely if used on similar or related goods and/or
services.
Serial No. 75/750,581
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We turn next to a consideration of the respective goods
and services. The Trademark Examining Attorney argues that
applicant’s services are highly related to the goods and
services of registrant. She notes correctly that the
services of applicant and goods and/or services of registrant
need not be identical or directly competitive in order to
find a likelihood of confusion. Rather, they need only be
related in some manner, or the conditions surrounding their
marketing be such, that they could be encountered by the same
purchasers under circumstances that could give rise to the
mistaken belief that the goods and services come from a
common source. In re Martin's Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Coming
Glass Works, '229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223
USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott
Paper Co., 200 USPQ 738 (TTAB 1978); and In re International
Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
In this context, the Trademark Examining Attorney argues
as follows:
The applicant has “consulting services, namely
consulting with small businesses and start-up
companies with respect to computer servers and
networking equipment; hosting the web sites of
others on a computer server for a global
computer network; graphic design services;
computer services, namely web site design and
development, software programming for others.”
The registrant’s goods and services include
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“voice and data communications systems, data
processing systems, inventory and cash
management systems, security systems, and
control systems, all comprised of computer
hardware, transmitter and receivers” and
“providing the integration of voice and data
communication systems, data processing
systems, inventory and cash management
systems, security systems, and control
systems, comprising computer hardware and
software, transmitters and receivers.”
The applicant provides consulting services
regarding computer servers and networking
equipment. A “network” includes “a group or
system of electric components and connecting
circuitry designed to function in a specific
manner,” and “a system of computers
interconnected by telephone wires or other
means in order to share information … .” The
registrant’s goods are clearly comprised of
“networking equipment,” while its services
include integration of such equipment.
The term “integration” means, “putting diverse
hardware and/or software components together
to work as a system … .” Thus, the
applicant’s services involve consulting in the
field of the goods and services of the
registrant.
Moreover, the Trademark Examining Attorney cites to the
recital of both classes of services in the application as
well as to the materials submitted with applicant’s first
request for reconsideration, for the proposition that
applicant’s services clearly involve more than consulting.
She notes that according to applicant’s own website,
applicant provides “large scale network design and
implementation,” and that applicant’s “expertise allows us to
Serial No. 75/750,581
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integrate products and services to produce robust customer
solutions.” From this material, she argues that applicant
provides consulting services as well as other goods and
services to its customers, and that such goods and services
might well overlap with those of the registrant.
Finally, to the extent they may not be overlapping, she
takes the position that the services provided by applicant
are in the normal field of expansion for the registrant, and
must be considered as such in our determination under Section
2(d). In re General Motors Corp., 196 USPQ 574 (TTAB 1977).
In reviewing the constraints inherent in an ex parte
appeal of this type, the Trademark Examining Attorney is
correct in pointing out that any Board determination as to
likelihood of confusion must be made based upon the goods and
services as set forth in the actual application and
registration(s). Applicant states that the “evidence of
record shows that the registrant offers computer software to
the hospitality and healthcare industries, and in particular,
the registrant provides handheld computers to wait staff in
restaurants and housekeeping staff in hotels to facilitate
communication with other restaurants and hotel staff … .” On
the other hand, as noted by the Trademark Examining Attorney,
the four cited registrations are not limited to a particular
industry or personnel within an industry and, as identified,
Serial No. 75/750,581
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encompass goods and services much broader than just the
hospitality and healthcare industries. Extrinsic evidence
attempting to establish the exact nature of the registrant’s
goods and services is not material because the Board must
consider registrant’s various goods and services as
identified. See Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, 811 F.2d 1490, 1 UPSQ2d 1813, 1815, (Fed. Cir.
1987); In re Continental Graphics Corporation, 52 UPPQ2d 1374
(TTAB 1999); In re Elbaum, 211 USPQ 639 (TTAB 1981).
Accordingly, where, as here, the cited registrations describe
the goods and services broadly without limitation, we must
presume that the registrations encompass all goods and
services of the type described. See Elbaum at 639.
While applicant’s recital of consulting services
explicitly limits its customers to “small businesses and
start-up companies,” registrant’s goods and services
otherwise remain unlimited in scope. Hence, according to
trademark law and the logic of the relevant marketplace, we
must presume herein that applicant’s recited services are
related to the goods and services of the registrant.
Accordingly, we find that purchasers will encounter the goods
and services of registrant as well as the services of
applicant both being marketed with confusingly similar marks,
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and will mistakenly believe that they are being provided by
the same source.6
In response to applicant’s caution that we must consider
the realities of the marketplace, we conclude that the
Trademark Examining Attorney has done just that. We do not
find that the Trademark Examining Attorney has concluded that
the services are related merely because of similar
terminology as to computers, computer components and/or
“network related” services.
6 From a sampling of third-party registrations attached to the
Final Office action, the Trademark Examining Attorney argues that
it is common for the same mark to be used in connection with the
services of the applicant as well as on or in connection with the
goods and services of the registrant.
In determining the similarity or dissimilarity and nature of
the respective goods and services, we find this evidence
corroborative of other evidence in the record. Specifically, the
third-party registrations support the conclusion that the same
source, using the same mark, may well be marketing computer
hardware and software as well as providing services related to
network integration and consulting. See In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) [Although third-party
registrations “are not evidence that the marks shown therein are in
use on a commercial scale or that the public is familiar with them,
[they] may have some probative value to the extent that they may
serve to suggest that such goods or services are the type which may
emanate from a single source”]. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Applicant argues, in effect, that one could prove any two sets
of goods or services to be “bedfellows” using such a technique. We
agree with this position to the extent that the third-party
registrations are multiple-class registrations reflecting the house
marks of large corporations involved in a myriad of divergent and
arguably unrelated fields (as that concept has developed under the
Lanham Act). However, that does not correctly characterize the
majority of the third-party registrations included in this record.
The existence of some such registrations may well reduce, if not
vitiate, the probative value of this corroborative evidence.
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Turning to the du Pont factors dealing with the
similarity or dissimilarity of established, likely-to-
continue trade channels as well as the conditions under which
and buyers to whom sales are made, we must presume that
applicant’s services and registrant’s goods and services will
move through all of the normal channels of trade to all of the
usual purchasers for goods and services of the types
identified. See Canadian Imperial Bank, supra at 1815.
Hence, in looking to these two related du Pont factors, we
conclude that the channels of trade and classes of purchasers
(e.g., especially marketing directed toward “small businesses
and start-up companies”) will be the same.
Accordingly, we find that the du Pont factors dealing
with the similarity of the involved marks and relatedness of
the involved services/goods strongly militate in favor of a
finding of likelihood of confusion. We have no probative
evidence on which we could resolve any of the remaining
du Pont factors in applicant’s favor. Thus, we find that
there is a likelihood of confusion and that the refusal of
registration must be affirmed.
Finally, we turn to the last du Pont factor – any other
established fact probative of the effect of use. It is true
that another Trademark Examining Attorney approved for
publication in the Trademark Official Gazette three more of
registrant’s marks. These marks reflected trademark
Serial No. 75/750,581
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applications filed by registrant after applicant’s involved
application.7 It is in this context that we address
applicant’s contention that this refusal under Section 2(d)
of the Act should have been withdrawn when it became clear
that three conflicting applications owned by the cited
7 These three registrations are identified in the record as:
(1) Reg. No. 2,504,253, issued on November 6, 2001,
based upon an application filed on December 4, 2000 for the
mark AMERANTH PUTS WIRELESS TO WORK as used for “computer
software for the integration of wireless voice and data
communications systems, data processing systems, inventory and
cash management systems, handheld computer systems and
networks,” in International Class 9, and in connection with
“providing the integration of wireless voice and data
communications systems, data processing systems, inventory and
cash management systems, handheld computer systems and
networks, in International Class 42;
(2) Reg. No. 2,522,530, issued on December 25, 2001,
based upon an application filed on March 20, 2001 for the mark
AMERANTH WIRELESS AT WORK (special form drawing) as used in
connection with “computer software for the integration and
synchronization of wireless voice and data communications
systems, data processing systems, inventory and cash
management systems, handheld computer systems and networks,”
in International Class 9, and in connection with “providing
the integration and synchronization of wireless voice and data
communications systems, data processing systems, inventory and
cash management systems, handheld computer systems and
networks,” in International Class 42.
(3) Reg. No. 2,594,006, issued on July 16, 2002, based
upon an application filed on December 4, 2000 for the mark
AMERANTH WIRELESS as used in connection with “computer
software for the integration and synchronization of wireless
voice and data communications systems, data processing
systems, inventory and cash management systems, handheld
computer systems, computer networks and the Internet,” in
International Class 9, and in connection with “providing the
integration and synchronization of wireless voice and data
communications systems, data processing systems, inventory and
cash management systems, handheld computer systems, computer
networks and the Internet,” in International Class 42.
Serial No. 75/750,581
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registrant, but filed after the instant application, were
allowed to register over this application.
First, as the Trademark Examining Attorney pointed out
in her response to applicant’s second request for
reconsideration, the determination herein as to likelihood of
confusion cannot be affected by an arguably inconsistent
decision made by another Trademark Examining Attorney with
regard to applications filed after the application in
question.
Although it is clear that examination of this application
and registrant’s subsequent applications was inconsistent, as
the Trademark Examining Attorney has correctly pointed out,
the Court of Appeals for the Federal Circuit has made clear
that each case must be determined based on the merits of the
record submitted in the application in question. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) [“Even if some prior registrations had some
characteristics similar to [applicant’s] application, the
PTO’s allowance of such prior registrations does not bind the
Board or this court. … Needless to say, this court
encourages the PTO to achieve a uniform standard for
assessing registrability of marks. Nonetheless, the Board
(and this court in its limited review) must assess each mark
on the record … submitted with the application.”]; In re
Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 (TTAB
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2001); and In re Pennzoil Products Co., 20 USQP2d 1753, 1758
(TTAB 1991).
Accordingly, we are constrained to review the record
before us insofar as it bears on the various du Pont factors,
and we cannot address that inconsistency in this appeal from
the refusal in the involved application.
In conclusion, we find that in view of the substantial
similarities in the involved marks and the relationship
between the involved goods and services, the contemporaneous
use of applicant’s mark and registrant’s cited marks is
likely to cause confusion or mistake as to the source or
sponsorship of such goods and services.
Decision: The refusal of registration is affirmed.