Information Builders, Inc.v.Techinfocus, Inc.

Trademark Trial and Appeal Board

May 13, 2003

No. 91117490 (T.T.A.B. May. 13, 2003)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
Trademark Trial and Appeal Board
____________
Information Builders, Inc.
v.
Techinfocus, Inc.
____________
Consolidated Opposition Nos. 117,490 and 117,505
____________
Allen H. Levine of Levine & Mandelbaum for Information
Builders, Inc.
Michael D. Oliver of Bowie & Jensen for Techinfocus, Inc.
____________
Before Hanak, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Techinfocus, Inc. (applicant) seeks to register
TECHINFOCUS in typed drawing form and TECHINFOCUS and
design as shown below for “software that permits users to
transmit over public networks and private networks reports,
invoices, marketing information and data in a graphical
format that is interactive.” Both applications were filed
in the summer of 1999 with the same claimed first use date
of August 18, 1998.
Opp. Nos. 117,490 and 117,505
2
On February 23, 2000 Information Builders, Inc.
(opposer) filed two Notices of Opposition alleging that
long before August 1998 it had both used and registered a
number of FOCUS marks for computer programs that were
extremely closely related to applicant’s programs such that
the contemporaneous use of opposer’s FOCUS marks and
applicant’s TECHINFOCUS marks would result in purchaser
confusion, mistake and deception. In particular, opposer
claimed ownership of the following marks: FOCUS, PC/FOCUS,
WEBFOCUS, FOCUS VISION and FOCUS FUSION.
Applicant filed Answers which denied the pertinent
allegations of the Notices of Opposition. In an order
dated February 14, 2001 this Board granted opposer’s motion
to consolidate the two oppositions in as much as they
involved “common questions of law and fact.”
Opp. Nos. 117,490 and 117,505
3
Both parties filed briefs. Neither party requested a
hearing.
The record in this case is summarized at page 4 of
opposer’s brief and at page 4 of applicant’s brief. With
one exception, the parties agree as to what constitutes the
record. The one exception is opposer’s third Notice of
Reliance which at pages 5 and 6 of applicant’s brief
applicant requests be stricken from the record. Because in
its opening brief opposer never relied upon the documents
attached to its third Notice of Reliance and because in its
reply brief opposer does not discuss applicant’s motion to
strike, the motion to strike is granted as well taken.
Before turning to the issue of likelihood of
confusion, we will discuss the issue of priority. Because
opposer has properly made of record its registrations for
FOCUS, PC/FOCUS, WEBFOCUS, FOCUS VISION and FOCUS FUSION,
priority rests with opposer. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). Moreover, opposer has established through the
testimony of its president (Gerald D. Cohen) that it has
used each of the foregoing marks continuously from a date
long before August 1998, applicant’s claimed first use
date. Indeed, opposer first used its mark FOCUS in
connection with computer software in 1975. From 1975
Opp. Nos. 117,490 and 117,505
4
through 2001 opposer has sold nearly $3 billion worth of
computer software under its FOCUS marks. In addition,
during that same period opposer has spent in excess of $47
million advertising its various FOCUS computer software.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the goods of the parties, it is well
settled that in Board proceedings “the question of
likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods and/or
services recited in applicant’s application vis-à-vis the
goods and/or services recited in opposer’s registration,
rather than what the evidence shows the goods and/or
services to be.” Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
Of course, an opposer is not limited to the rights which it
derives from its registration(s). An opposer is entitled
to establish prior common law rights in a mark, and if an
Opp. Nos. 117,490 and 117,505
5
opposer does so, this mark is taken into consideration in
any likelihood of confusion analysis.
With the foregoing in mind, we will now consider the
goods of opposer’s five FOCUS registrations. All of the
registrations depict the five marks in typed drawing form.
Opposer has registered FOCUS and WEBFOCUS for “computer
programs for data base management.” Registration Nos.
1,652,265 and 2,248,562. Opposer has registered PC/FOCUS
for “diskettes containing a microprocessor program for use
in preparation of reports and graphs from data stored in a
personal computer.” Registration No. 1,300,245. Opposer
has registered FOCUS VISION for “pre-recorded computer
programs used to store images in a database.” Registration
No. 1,478,426. Finally, opposer has registered FOCUS
FUSION for “computer software for database management
systems.” Registration No. 1,965,984.
As previously noted, applicant seeks to register
TECHINFOCUS in typed drawing form and TECHINFOCUS and
design for “software that permits users to transmit over
public networks and private networks reports, invoices,
marketing information and data in a graphical format that
is interactive.” The goods of opposer’s registrations for
FOCUS, WEBFOCUS and FOCUS FUSION are very broadly described
as computer programs (software) for database management.
Opp. Nos. 117,490 and 117,505
6
Database management encompasses a wide array of computer
software functions including the transmission of data (i.e.
reports and the like) in various formats (including
graphical) over both public and private networks. Thus,
the goods described in applicant’s TECHINFOCUS applications
and opposer’s registrations for FOCUS, WEBFOCUS and FOCUS
FUSION, if not identical, are extremely closely related.
Moreover, opposer’s president testified that in actual
practice opposer has used its mark WEBFOCUS since 1996 to
“prepare reports and access information and distribute
information through the Internet.” (Cohen deposition page
12). Despite differences in terminology, distributing
information through the Internet is the same as
transmitting over public networks information in the form
of reports, invoices, marketing information and data.
We also note that the goods recited in opposer’s
PC/FOCUS registration – essentially programs for use in
preparation of reports and graphs from data stored in a
personal computer – are extremely similar to the goods for
which applicant seeks to register TECHINFOCUS in that
before one can transmit data in a graphical format
(applicant’s goods) one must first prepare the graphs from
data stored in a computer, including a personal computer.
Likewise, the goods of opposer’s registration for FOCUS
Opp. Nos. 117,490 and 117,505
7
VISION – essentially computer programs to store images in a
database – are likewise very closely related to applicant’s
goods for the same reasoning.
A factor closely related to the similarities of the
goods is the similarity of the trade channels. In this
regard, we note that at pages 16 and 17 of its brief,
applicant concedes that its applications and opposer’s
registrations contain no restrictions as to trade channels
and that “consumers might see both [opposer’s and
applicant’s] marks in the same context.” Moreover, neither
the applications nor the registrations contain any
limitation as to the cost of the goods. Indeed, the record
reveals that in actuality applicant intends to market its
software for about $200 and that opposer sells certain of
its software for as little as $395. In sum, we find that
at least certain of opposer’s goods are functionally
identical to applicant’s goods, and that in addition the
goods of both parties are marketed through the same trade
channels at approximately the same price range to the same
end users.
Turning to a consideration of the marks, we note at
the outset that when the goods are very closely related, as
is the case here, “the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion
Opp. Nos. 117,490 and 117,505
8
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
To begin with, we note that applicant’s two marks and
opposer’s five marks all contain the word FOCUS. As
applied to computer software or indeed computers in
general, the word “focus” has no meaning. Microsoft
Computer Dictionary (5th ed. 2002). To be clear, the
aforementioned dictionary does define the word “focus” as
follows: “In television and raster-scan displays, to make
an electron beam converge at a single point on the inner
surface of the screen.” Likewise, this dictionary defines
the acronym FOCUS as follows: “See Federation on Computing
in the United States.”
Applicant has made of record third-party registrations
containing the word FOCUS for various computer products.
In light of the foregoing, applicant argues at page 19 of
its brief that “opposer’s scope of protection for the FOCUS
Marks, as a matter of law, should be narrow.”
The problem with applicant’s argument is that
applicant has made of record absolutely no evidence
whatsoever showing that any of these registered third-party
marks are in use, much less they have been used so
extensively such that consumers of computer software have
Opp. Nos. 117,490 and 117,505
9
become conditioned to distinguish slight differences in
various FOCUS marks. See Smith Bros. Mfg. Co. v. Stone
Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973)
(“But in the absence of any evidence showing the extent of
use of any of such marks or whether any of them are now in
use, they [the third-party registrations] provide no basis
for saying that the marks so registered have had, or may
have, any effect at all on the public mind so as to have a
bearing on likelihood of confusion.”)(original emphasis).
Indeed, the only evidence of record dealing with the issue
of whether third-parties have used FOCUS as part of their
marks for computer software or for any type of computer
products is the testimony of opposer’s president. In this
regard, Mr. Cohen testified at page 44 of his deposition
that “there are no other trademarks that include FOCUS on
computers today, that I’m aware of.”
In analyzing applicant’s two TECHINFOCUS marks, we
note that applicant has taken the arbitrary term FOCUS and
merely added to it the highly suggestive, if not
descriptive, wording TECHIN. In this regard, we note that
at page 15 of its brief, applicant explains that its
TECHINFOCUS marks were derived by “combining the first
syllable of ‘Technology,’ the word ‘in’ and ‘Focus.’” As
applied to computer software, the word “technology” or its
Opp. Nos. 117,490 and 117,505
10
shortened form “tech” is highly suggestive, if not
descriptive, of computer software.
Likewise, opposer’s marks WEBFOCUS and PC/FOCUS
contain at the beginning of the marks highly suggestive, if
not descriptive, terms as applied to computer software,
namely, WEB and PC. In view of the foregoing, we find that
consumers familiar with opposer’s FOCUS, WEBFOCUS and
PC/FOCUS marks would, upon seeing TECHINFOCUS on extremely
similar if not identical computer software, assume that
TECHINFOCUS was yet another of opposer’s FOCUS marks. This
is true even with regard to applicant’s TECHINFOCUS and
design mark inasmuch as the design in said mark does little
to distinguish it from opposer’s marks FOCUS, WEBFOCUS and
PC/FOCUS.
Of course, it need hardly be said that to the extent
that there are doubts on the issue of likelihood of
confusion, said doubts must be resolved in favor of opposer
as the prior user. Century 21 Real Estate, 23 USPQ2d at
1707; In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1691 (Fed. Cir. 1993).
Decision: The oppositions are sustained.