Broadcom Corp.

Trademark Trial and Appeal Board

Jan 26, 2009

No. 78445446 (T.T.A.B. Jan. 26, 2009)

Mailed: January 26, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Broadcom Corp.
________

Serial No. 78445446
_______

Susan Natland of Knobbe, Martens, Olson & Bear LLP for
Broadcom Corp.

Stephanie M. Ali, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Cataldo, Taylor and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Broadcom Corp. to register
the mark BROADVOICE in standard characters on the Principal
Register for “computer software for voice over internet
protocol (voip) technology; software allowing internet
users to use the internet as a telephone; voice compression
hardware and software” in International Class 9.1

1 Application Serial No. 78445446 was filed on July 2, 2004,
based upon applicant’s assertion of a bona fide intent to use the
mark in commerce. Applicant filed an amendment to allege use
after commencement of this appeal. Accordingly, it has not been
acted upon by the examining attorney.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78445446
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with applicant’s
goods, so resembles the mark, BROADVOX, previously
registered in standard characters for “Internet telephony
services,” in International Class 382 as to be likely to
cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed main briefs
on the issue under appeal and applicant filed a reply
brief.
Likelihood of Confusion
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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods

2 Registration No. 2940100 issued on April 12, 2005 with the
following translation of the foreign wording in the mark: “The
foreign wording VOX in the mark translates into English as
voice.”

Ser No. 78445446
3
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Goods and Services
We begin by comparing applicant’s goods with the
services of registrant. In this case, registrant provides
telephony services over the internet. The examining
attorney has made of record printouts from registrant’s
internet website (broadvox.net) indicating that:
In 2001, Broadvox entered the wholesale telephony
arena as the first US-based VoiP provider to
accept and pass voice packets.

Applicant’s goods, as identified, provide voice over
internet (VoiP) technology and allow users to utilize the
internet as a telephone. Thus, applicant’s goods are
related on their face to registrant’s services in that both
provide telephone services over the internet.
In addition, the examining attorney has made of record
a number of use-based third-party registrations which show
that various entities have adopted a single mark for
applicant’s goods, on the one hand, and registrant’s
services, on the other hand. See, for example:
Registration No. 3387125 for, inter alia,
computer software for enabling voice-over-
internet protocol (VoiP) communications; internet
telephony services;

Registration No. 3039368 for, inter alia,
computer hardware and software that enables
Ser No. 78445446
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voice-over internet protocol communications,
internet telephony services; and

Registration No. 2994786 for, inter alia,
computer software that facilitates video and
voice communications between parties over the
internet; computer telephony software; internet
telephony services.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). The evidence of record establishes that applicant’s
goods are closely related to the services identified in the
cited registration, and further may be identified under the
same mark. As such, this du Pont factor favors a finding
of likelihood of confusion.
Channels of Trade
Furthermore, we are not persuaded by applicant’s
arguments that its goods are marketed in channels of trade
that are separate and distinct from those in which
registrant’s services may be encountered. It is settled
that in making our determination regarding the relatedness
of the goods and services, we must look to those goods and
services as identified in the involved application and
cited registration. See Octocom Systems, Inc. v. Houston
Ser No. 78445446
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Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”) In this
case, neither applicant’s identification of goods nor
registrant’s recitation of services contain any
restrictions with regard either to the channels of trade or
the consumers to whom the goods and services are marketed.
Accordingly, both applicant’s goods and registrant’s
services are presumed to move in all normal channels of
trade and be available to all classes of potential
consumers, including consumers of each others’ goods and
services. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
This du Pont factor further favors a finding of likelihood
of confusion.
Ser No. 78445446
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The Marks
We turn then to the first du Pont factor, i.e.,
whether applicant’s BROADVOICE mark and registrant’s
BROADVOX mark are similar or dissimilar when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We note
initially that 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 or services 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).
In this case, the marks BROADVOICE and BROADVOX are
highly similar in appearance and sound. Both marks share
the identical first syllable BROAD, followed by similar
second syllables, respectively VOICE and VOX. As a result,
the marks differ only in the last letter of the mark in the
cited registration and the last three letters in
Ser No. 78445446
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applicant’s mark. This distinction between BROADVOICE and
BROADVOX, especially occurring at the end of the marks,
results only in very minor differences between them in
appearance and sound. Furthermore, we note that the
identical word BROAD, which the marks share in common, is
also the first word in the marks. Presto Products, Inc. v.
Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB
1988)(“…[it is] a matter of some importance since it is
often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered.”).
See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, supra.
In addition, the marks as a whole are substantially
similar in connotation and commercial impression. The
origin of the word voice is vox.
Voice: [Middle English, from Old French vois,
from Latin vox, voc-; see wek- in Indo-European
roots.]3

As such, BROADVOICE and BROADVOX both connote the broad
distribution or availability of voice communication.
BROADVOICE and BROADVOX thus have the same connotation as

3 The American Heritage Dictionary of the English Language, 4th
ed. 2006. The Board may take judicial notice of dictionary
definitions, including online dictionaries which exist in printed
format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791
n.3 (TTAB 2002). See also University of Notre Dame du Lac v. J.
C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 78445446
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applied to the goods and services of applicant and
registrant, both of which provide telephone communications
over the internet and convey highly similar commercial
impressions.
Thus, based upon the foregoing analysis, we find that
applicant’s mark is highly similar to that of registrant in
appearance, sound, connotation and overall commercial
impression. As such, this du Pont factor also weighs
heavily against applicant.
Market Interface Between Applicant and Registrant
Applicant argues that as a result of its ownership of
prior Registration No. 2913502, issued on December 21, 2004
for the mark BROADVOICE for “computer hardware; integrated
circuits; and software for controlling and using integrated
circuits,” the United States Patent and Trademark Office
has already determined that no likelihood of confusion
exists with the cited BROADVOX mark, essentially presenting
a laches and estoppel situation attributable to the
registrant.
Applicant is essentially asserting a prior
registration defense in an ex parte proceeding. The
prior registration defense is an affirmative defense in an
inter partes proceeding. It provides that if an
applicant owns a registration for the same or substantially
Ser No. 78445446
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identical mark for the same or substantially identical
goods, the opposer cannot be damaged by the registration of
applicant’s current application. See Morehouse Mfg. Corp.
v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715, 717
(CCPA 1969). To be successful, the prior registration
defense requires that goods in the application be
identical, or nearly so, to the goods in the prior
registration. See Morehouse Mfg. Corp. v. J. Strickland &
Co., supra (“there is no added damage from the second
registration of the same mark if the goods named in it are
in fact the same”). See also Joseph & Feiss Co. v.
Sportempos, Inc., 451 F.2d 1402, 172 USPQ 235, 236 (CCPA
1971) (“the goods specified in applicant’s registration and
application are in part identical and otherwise considered
substantially the same, or so related as to represent in
law a distinction without a difference”).
Applicant’s argument is not unique. The Board faced
the same issue in the case of In re Sunmarks Inc., 32
USPQ2d 1470 ( TTAB 1994). In that case, the application
for ULTRA for “gasoline, motor oil, automotive grease,
general purpose grease, machine grease and gear oil” was
refused registration even though applicant owned two
registrations for ULTRA for “motor oil” and for “gasoline
for use as automotive fuel, sold only in applicant’s
Ser No. 78445446
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automotive service stations.” In affirming the refusal to
register, the Board adopted the requirement from the
prior registration defense that applicant’s prior
registration must encompass the same or substantially
similar goods: “[t]he Office should not be barred from
examining the registrability of a mark when an applicant
seeks to register it for additional goods as it does here,
even when the additional goods are closely related to those
listed in a prior registration.” In re Sunmarks Inc.,
supra at 1472.
In this case, we find that “computer software for
voice over internet protocol (voip) technology; software
allowing internet users to use the internet as a telephone;
voice compression hardware and software” is substantially
different from “computer hardware; integrated circuits; and
software for controlling and using integrated circuits”
because the latter includes integrated circuits and
computer hardware without limitation as to purpose that are
not present in the goods as identified in the involved
application. Further, the computer software in the
identifications of goods are used for substantially
different purposes, that is, control of integrated circuits
versus voice compression, allowing use of the internet as a
telephone, and voice over internet protocol technology.
Ser No. 78445446
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Therefore, we are not in a position to say that there would
be no likelihood of confusion by the registration of
applicant’s mark for these goods despite applicant’s
ownership of the prior BROADVOICE registration.
Nor are we persuaded, as suggested by applicant, that
“[i]f Broadvox believed that there was a likelihood of
confusion between the marks, that belief would support a
cancellation action by Applicant against the BROADVOX
registration. Therefore, it is presumed that Broadvox
believes the marks can coexist” (brief, p. 7).
Particularly given the differences between the goods in
applicant’s prior registration and its involved
application, we are unwilling to infer from the fact that
neither applicant nor registrant has petitioned to cancel
the other’s registration that there is no likelihood of
confusion between the mark BROADVOICE as applied to the
goods in the involved application and BROADVOX as used in
connection with the services in the cited registration.
Actual Confusion
The final du Pont factor discussed by applicant and
the examining attorney is that of the lack of instances of
actual confusion. Applicant asserts that the absence of
actual confusion for nearly six years suggests no
likelihood of confusion. However, it is not necessary to
Ser No. 78445446
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show actual confusion in order to establish likelihood of
confusion. See Weiss Associates Inc. v. HRL Associates
Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990).
Particularly in an ex parte proceeding, applicant’s
assertion of the absence of actual confusion is of little
probative value in our determination on the issue of
likelihood of confusion because the Board cannot readily
determine whether there has been a significant opportunity
for actual confusion to have occurred, such that the
absence of confusion is meaningful. See In re Opus One
Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984); and In re Jeep Corp.,
222 USPQ 333 (TTAB 1984). In those situations where the
Board has recognized the absence of actual confusion as
probative in an ex parte setting, there existed a
“confluence of facts” which together strongly suggested
that the absence of confusion was meaningful and should be
given probative weight. See In re Opus One Inc., supra;
and In re Jeep Corp., supra. Such a “confluence of facts”
is not present in this record.
We note moreover that the test under Section 2(d) is
not actual confusion but likelihood of confusion. See In
re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003) (“uncorroborated statements of no known
Ser No. 78445446
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instances of actual confusion are of little evidentiary
value.”). See also, In re Kangaroos U.S.A., supra; and In
re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992).
Conclusion
Neither applicant nor the examining attorney has
discussed any of the remaining du Pont factors. We note,
nonetheless, that none seems to be applicable, inasmuch as
we have no evidence with respect to them.
In light of the foregoing, we conclude that consumers
familiar with registrant’s services sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s closely related goods offered
under its mark that the goods and services originated with
or are somehow 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. See 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 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.