Inspiration Software, Inc.

Trademark Trial and Appeal Board

Apr 11, 2008

No. 78734800 (T.T.A.B. Apr. 11, 2008)

Mailed: April 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Inspiration Software, Inc.
________

Serial No. 78734800
_______

David P. Cooper of Kolisch Hartwell P.C. Inspiration
Software, Inc.

Mary D. Munson, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Walters, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Inspiration Software, Inc. has filed an application to
register on the Principal Register the mark INSPIRED (in
standard character format) for goods ultimately identified
as “computer software for use as a writing tool in
education” in Class 9.1
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on

1 Serial No. 78734800 filed October 17, 2005, and with an
allegation of a bona fide intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 78734800
2
the ground that applicant’s mark, is likely to be confused
with the registered mark INSPIRE (in typed form) for
“computer software, namely, software for creating, editing,
and annotating drawings and animations comprised of
multiple drawings,” in Class 9.2
After the refusal was made final, applicant appealed
and requested reconsideration of the final refusal. On
August 27, 2007, the examining attorney denied the request
for reconsideration and the appeal was resumed. Applicant
and the examining attorney filed briefs. For the reasons
discussed below, we affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all 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,
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).

2 Registration No. 2949742 issued May 10, 2005.

Serial No. 78734800
3
We consider first the similarity of the marks. In
determining the similarity or dissimilarity of marks, we
must consider the marks in their entireties in terms of
sound, appearance, meaning and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test under
this 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 impressions that
confusion as to the source of the 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).
Applicant’s mark is INSPIRED and the cited mark is
INSPIRE. We find these marks to be substantially similar
in sound, appearance, and connotation and commercial
impression. The only difference between them is the
addition of the letter “d” to the end of applicant’s mark,
making it the past tense formative of the registered mark.
This change in tense is not likely to be remembered by
purchasers when seeing or hearing these marks at different
Serial No. 78734800
4
times. Nor does the tense change alter the meaning of the
marks.3 See, e.g., In re Dahiquist, Inc., 192 USPQ 237, 238
(TTAB 1976) (“The past tense, ‘phased’, of the verb of
which ‘phase’ is the present tense and ‘phasing’ is the
present participle, would, we think, convey to purchasers
of, and dealers in, high fidelity sound reproduction
equipment the same meaning or connotation as the words
‘phase’ and ‘phasing’”). Herein, the commercial impression
created by both marks is that the software sold thereunder
will stimulate or bring about results.
Before leaving this discussion, we address applicant’s
contention that there is no likelihood of confusion because
its applied-for mark, INSPIRED, is part of a family of
marks owned by applicant which pre-dates registration of
the cited mark. Applicant bases this claim on its
ownership of two registrations for the mark INSPIRATION and
an application for the mark INSPIREDATA. We find this
claim unavailing. Notwithstanding the absence of proof of
ownership of these registrations and application, mere

3 In this regard, we take judicial notice of the relevant
definitions of “inspire” as meaning “[t]o stimulate to action;
motivate” and “[t]o be the cause or source of; bring about” in
The American Heritage Dictionary of the English Language (4th ed.
2000). The Board may take judicial notice of dictionary
definitions. 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).

Serial No. 78734800
5
ownership of a registration or an application does not show
that the public is familiar with the use of the marks shown
therein. There is also no evidence in the record that
demonstrates that applicant has a family of marks. Compare
J & J Snack Foods Corp. v. McDonald’s, 932 F.2d 1460, 18
USPQ2d 1899 (Fed. Cir. 1991). Moreover, even if applicant
had proven the existence of a family of marks, this appeal
involves the registrability of applicant’s particular mark,
INSPIRED. Applicant’s ownership of other marks that
resemble its applied-for mark are not relevant to the
specific likelihood of confusion issue involving the
registered mark INSPIRE. See, Hornblower & Weeks Inc. v.
Hornblower & Weeks Inc., 60 USPQ2d 1733, 1737 (TTAB 2001);
Baroid Drilling Fluids v. Sun Drilling Products, 24 USPQ2d
1048, 1052 (TTAB 1992); and In re Lar Mor International,
Inc., 221 USPQ 180, 183 (TTAB 1983).
We now turn to a consideration of the goods identified
in the application and the cited registration. It is well
settled that the question of likelihood of confusion must
be determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration. Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783
(Fed. Cir. 1992); and The Chicago Corp. v. North American
Serial No. 78734800
6
Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). Further, it is
a general rule that goods or services need not be identical
or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that the
goods or services are related in some manner or that some
circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which would give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer
or that there is an association between the producers of
each parties’ goods or services. In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991), and the cases cited therein.
The examining attorney argues that there is a clear
relationship between applicant’s goods and the cited goods,
as both parties’ goods are computer software goods for
document creation and manipulation. The examining attorney
particularly argues that applicant “broadly identified the
function of its computer software as a ‘writing tool’ such
that its functions could include word processing,
electronic mail and recording notes, among other things.”
(Brief at 4). The examining attorney further argues that
computer software goods for use in writing and for use in
drawing are the type of goods that frequently emanate from
Serial No. 78734800
7
the same sources. To support her position, the examining
attorney made of record with her first office action copies
of third-party registrations to show that various trademark
owners provide, under the same mark, both computer software
for writing functions and drawing functions. These third-
party registrations may serve to suggest that the types of
services involved herein are related services. 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
nonetheless have some probative value to the extent that
they may serve to suggest that such goods or services are
of a type which may emanate from a single source”). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786
(TTAB 1993).
These registrations include:4
Registration No. 2952957 for, inter alia, “computer
software for use in word processing, for electronic
mail, … recording notes, … image editing, graphics
creation and editing, drawing, computer aided design
and drafting, and creation of multimedia
presentations”;

Registration No. 2810630 for “computer software used
for creating a virtual whiteboard on a computer screen

4 We note that four of these registrations are owned by the
same entity.
Serial No. 78734800
8
for the purpose of drawing illustrations and writing
text”;

Registration No. 2940644 for inter alia “software for
use in word processing, for electronic mail and
scheduling, desktop publishing, image editing, graphics
creation and editing, drawing, computer aided design
and drafting [and] creation of multimedia
presentations”;

Registration No. 2890091 for, inter alia, “computer
software for use in word processing, for electronic
mail, … recording notes, … image editing, graphics
creation and editing, drawing, computer aided design
and drafting, and creation of multimedia
presentations”;

Registration No. 2958075 for, inter alia, “computer
software for use in word processing, for electronic
mail, … recording notes, … image editing, graphics
creation and editing, drawing, computer aided design
and drafting, and creation of multimedia
presentations”; and

Registration No. 2950253 for, inter alia, “computer
software for use in word processing, for electronic
mail, … recording notes, … image editing, graphics
creation and editing, drawing, computer aided design
and drafting, and creation of multimedia
presentations.”

The examining attorney also introduced with her Final
Office Action Internet evidence retrieved from a search of
the website www.amazon.com [writing and drawing software]
to show that computer software for use in both writing and
drawing are offered under the marks, MICROSOFT®, COREL® and
ADOBE®.5

5 See also, the web pages from www.corel.com,
www.adobe.com/products/, www.microsoft.com/products/ and
www.bestbuy.com.

Serial No. 78734800
9
Applicant, in urging that the refusal to register be
reversed, argues that in a previous “settlement/co-
existence agreement,” “registrant agreed to limit the use
of its mark to developer’s toolkits that can be used to
develop commercial custom software,” and that applicant’s
“amended goods identification clarifies that there is
substantial differences between applicant’s writing tool
software and its education market and registrant’s
‘developer’s toolkits’ that are not sold in the education
market.” (Brief at 2). Applicant did not, however, make of
record a copy of the settlement/co-existence agreement.
As pointed out by the examining attorney, the
registrant did not incorporate the asserted limitation in
its identification of goods and, as previously noted,
likelihood of confusion must be determined on the basis of
the goods and services as they are identified in the
application and the registration. Canadian Imperial Bank
v. Wells Fargo Bank, supra. Herein, applicant’s goods are
identified as “computer software for use as a writing tool
in education” and the goods identified in the cited
registration are “computer software, namely, software for
creating, editing, and annotating drawings and animations
comprised of multiple drawings.” We therefore are
constrained to compare these identifications in determining
Serial No. 78734800
10
the issue of likelihood of confusion. See e.g., In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (An
applicant may not restrict the scope of the goods covered
in the cited registration by argument or extrinsic
evidence).
Based on the identifications of record, we find that
the third-party registrations and third-party uses are
sufficient to demonstrate that applicant’s computer
software writing tool and registrant’s computer software
for manipulating drawings are related.
Further, in the absence of any limitations to the
identification of goods in the cited registration, we must
presume that registrant’s software for manipulating
drawings will move in all normal channels of trade,
including the field of education, and will be used by all
normal potential purchasers, including educators. In re
Elbaum, 211 USPQ 639 (TTAB 1981).
Last, we are not persuaded by applicant’s argument
that there is no likelihood of confusion based on the
earlier referenced prior settlement/co-existence agreement
between applicant and registrant. First, as just stated,
applicant did not make the agreement of record. Second,
and more importantly, that agreement was not related to the
marks involved in this proceeding, i.e., applicant’s mark
Serial No. 78734800
11
INSPIRED and the cited mark, INSPIRE. Rather, as applicant
indicated, that agreement addressed the likelihood of
confusion between the cited registered mark and applicant’s
registered mark, INSPIRATION, for different goods and
services. As such, even if the agreement were of record,
it would have no probative value in this case.
In view of the foregoing, we conclude that prospective
purchasers familiar with the registered mark INSPIRE for
computer software, namely, software for creating, editing,
and annotating drawings and animations comprised of
multiple drawings would be likely to believe, upon
encountering applicant’s substantially similar mark
INSPIRED for computer software for use as a writing tool in
education, that such goods emanate from, or are sponsored
by or affiliated with the same source.

Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.