Broadcom Corp.Download PDFTrademark Trial and Appeal BoardJan 26, 2009No. 78445446 (T.T.A.B. Jan. 26, 2009) Copy Citation 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 4 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 5 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 6 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 7 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 8 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 9 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 10 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 11 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 12 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 13 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. Copy with citationCopy as parenthetical citation