Mesh-Networks, Inc.

Trademark Trial and Appeal Board

Mar 31, 2005

No. 76365791 (T.T.A.B. Mar. 31, 2005)

Mailed:
March 31, 2005
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MeshNetworks, Inc.
________

Serial No. 76365791
_______

Carolyn E. Knecht of Motorola, Inc. for MeshNetworks, Inc.1

Anne Madden, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Chapman, Bucher and Holtzman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
MeshNetworks, Inc. seeks registration on the
Principal Register of the mark MESHNETWORKS for services
recited in the application, as amended, as follows:
“wireless broadband services, namely, providing
voice, data, streaming media, and geolocation
via wireless means such as personal digital

1 The prosecution of this application was handled by
Antigone E. Juvelis of Roylance Abrams Berdo & Goodman, L.L.P.,
for applicant MeshNetworks, Inc. from the time of filing the
application through the filing of the appeal brief. While the
revocation of power of attorney to Mr. Juvelis and the
appointment of Ms. Knecht suggests that Motorola Inc. has
acquired MeshNetworks, an assignment has not yet been recorded
with the Assignment Branch of the United States Patent and
Trademark Office.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76365791
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assistants, personal computers, and cellular
telephones,” in International Class 38.2
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark
Examining Attorney has taken the position that applicant’s
mark, when used in connection with the recited services,
so resembles the mark MESHNET registered in connection
with the following goods and services, as to be likely to
cause confusion, to cause mistake or to deceive:
“integrated voice communication and information
distribution networks in the field of voice and
data transmission between vehicles, within
vehicles and between vehicles and ground
stations, comprising transmitters, receivers,
processors and computer software,” in
International Class 9;

“data and voice telecommunications services,
namely, the transmission of integrated voice and
data information via fiber optic cable,
telephone and wireless means,” in International
Class 38; and

“design for others of integrated voice
communications and data information distribution
systems comprised of a user controlled device, a
vehicle access unit, a portable data terminal,

2 Application Serial No. 76365791 was filed on February 4,
2002 based upon applicant’s allegation of use in commerce since
at least as early as February 2000. Throughout much of the
prosecution of this application, it was a combined class
application, also including a listing of goods in International
Class 9. Immediately prior to this appeal, applicant deleted
this class from the application over an informality (not related
to the likelihood of confusion refusal herein) raised by the
Trademark Examining Attorney.
Serial No. 76365791
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and network management software,” in
International Class 42.3

The Trademark Examining Attorney and applicant have
filed appeal briefs in the case. Applicant did not
request an oral hearing before the Board.
We affirm the refusal to register.
In arguing for registrability, applicant contends
that confusion is not likely because: the marks, when
considered in their entireties, present different
commercial impressions; technology-related marks are
granted a narrow scope of protection; purchasers exercise
a high degree of care in selecting communications
services; and applicant’s services and registrant’s goods
and services are distinguishable.
By contrast, the Trademark Examining Attorney
contends that applicant’s mark and registrant’s mark
create similar commercial impressions; that applicant’s
services are closely related to all of registrant’s goods
and services; and that both applicant and registrant
presumably market their respective services (i.e., the
provision of data and voice via wireless means) through
the same channels of trade.

3 Reg. No. 2068190 issued on June 10, 1997, Section 8
affidavit accepted and Section 15 affidavit acknowledged.
Serial No. 76365791
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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. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations
are the similarities between the marks and the
relationship of the goods and/or services. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
Turning first to a consideration of the marks, the
Trademark Examining Attorney contends that it is
significant that applicant’s mark and registrant’s mark
both contain variations of the wording MESHNET. Both
MESHNET and MESHNETWORKS are presented in standard
character (typed) drawings. The Trademark Examining
Attorney argues that the term “mesh” is arbitrary for the
listed telecommunications goods and services.4 The
Trademark Examining Attorney demonstrates from various
reference materials that the term “net” is recognized

4 We note that applicant has not challenged this position,
and the record contains no references to any technological
advances known as “wireless mesh networks.”
Serial No. 76365791
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shorthand for the longer term “network” in the fields of
computers and/or telecommunications.
By contrast, applicant argues as follows:
The refusal of registration engages in improper
dissection of Applicant’s mark by comparing only
the ‘MESHNET’ portion of Applicant’s mark and
ignoring the presence of the term ‘WORKS.’
Contrary to the analysis set forth in the
refusal, Applicant’s compound, unitary mark
consists of the term ‘MESH’ and the term
‘NETWORKS.’ The term ‘WORKS’ is a key element
of Applicant’s mark and is entitled to at least
as much consideration as the other elements of
the mark. Furthermore, the fact that
Applicant’s mark consists of three syllables,
while the cited mark consists of two syllables,
also makes confusion unlikely. [citation
omitted]. The addition of the term ‘WORKS’ and
the presence of an extra syllable in the
Applicant’s mark readily distinguish it from the
cited mark. When the marks are properly
considered in their entireties, the differences
between them are significant enough to avoid any
confusion.

On this factor, we agree with the Trademark Examining
Attorney that the respective marks, MESHNET and
MESHNETWORKS, when considered in their entireties,
present quite similar overall commercial impressions.
They have identical connotations in the field of
telecommunications inasmuch as the term “net” is a well-
known and readily recognizable shorthand for the term
“network.” While the differences between the two
syllables of the cited mark and the three syllables in
Serial No. 76365791
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applicant’s mark do create minor variations in the sound
and appearance of the respective marks, this slight
difference is insignificant when contrasted with the
substantial similarity in meaning or connotation.
As to a related du Pont factor focusing on the number
and nature of similar marks in use on similar goods, as
noted earlier, the Trademark Examining Attorney has argued
that the word “mesh” is arbitrary as applied to these
goods, and applicant has not suggested there are others in
the same or closely-related fields using variations on
“Mesh,” “Mesh net” or “Mesh networks.” Accordingly, we
must presume the cited mark is a strong mark entitled to a
broad scope of protection.
Turning next to a consideration of the respective
goods and services, we note that applicant and registrant
are providing goods and services involving the
transmission of voice and data via wireless means.
Nonetheless, applicant argues in its appeal brief, p. 8,
that the respective services are different:
Confusion is not likely in the instant case
because Applicant’s services and those
identified in the cited registration are
distinguishable. The cited registration
specifically identifies communications systems
between vehicles. However, Applicant’s services
consist of a self-forming, self-healing wireless
network that, unlike the services in the cited
Serial No. 76365791
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registration, is not limited to communication
between vehicles. In fact, Applicant’s services
can be used for communications between people,
machines, and sensors, among other applications.

Further, in contrast to the cited registration,
Applicant’s mark is used in connection with
geolocation applications which enable devices to
ascertain their proximity to other devices
either by determining their relative location to
other devices or by determining their absolute
location in space. Applicant designs and
develops technology that provides these
capabilities and sells this technology to
entities that integrate the technology into a
network solution. Applicant’s services have
much broader applications than and perform
additional functions from those identified in
the cited registration. Since the services
offered under Applicant’s mark and the cited
mark can be readily distinguished, confusion is
not likely.

Applicant relies upon cases of the Board in which
confusion was not found with respect to various computer
hardware and software products. Yet applicant quotes from
In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) for the
conclusion that “… the Board recognizes that similar marks
may coexist without confusion when used in connection with
technology and computer products and services….”5 We do
not agree that our case law supports the broad proposition

5 Similarly, applicant cites to Reynolds and Reynolds Co. v.
I. E. Systems Inc., 5 USPQ2d 1749, 1752 (TTAB 1987) [finding no
confusion between registrant’s family of ACCU- marks for
accounting-related computer programs and applicant’s ACCULINK
software for "asynchronous data communication terminal emulation
system” software, sold to a very narrow class of purchasers].

Serial No. 76365791
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as stated by applicant, that “technology-related marks are
granted a narrow scope of protection.” We have, however,
held that “a per se rule relating to source confusion vis-
à-vis computer hardware and software is simply too rigid
and restrictive an approach and fails to consider the
realities of the marketplace.” Quadram Corp., supra; and
Electronic Data Systems Corp. v. EDSA Micro Corp., 23
USPQ2d 1460, 1463 (TTAB 1992). Moreover, we note that the
Quadram Corp. case involved very specialized and specific
hardware and software products, unlike the more broadly-
described wireless telecommunications services recited in
the cited registration.
Furthermore, consistent with “the realities of the
marketplace,” Quadram Corp., supra, it is not necessary
that the goods or services be identical or even
competitive in nature in order to support a finding of
likelihood of confusion. It is sufficient that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances that would give rise, because of the
marks used in connection therewith, to the mistaken belief
that the goods originate from or are in some way
associated with the same source. In re International
Serial No. 76365791
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Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Further, the identifications of goods and/or the
recitations of services in the application and the cited
registration control the comparison of the goods and/or
services. See Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987)
[“[T]he 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
[the] registration, rather than what the evidence shows
the goods and/or services to be.”]; and In re Elbaum, 211
USPQ 639 (TTAB 1981).
When the goods and services are compared in light of
the legal constraints cited above, we find that
applicant’s wireless broadband services such as providing
for voice and data transmissions are related to
registrant’s voice and data telecommunications network
services and software and services involving designing
such telecommunication systems for others. For purposes
of the legal analysis of likelihood of confusion herein,
it is presumed that registrant’s registration encompasses
all goods and services of the nature and type identified,
Serial No. 76365791
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that the identified goods and services move in all
channels of trade that would be normal for such goods
and/or services, and that the goods and/or services would
be purchased by all of the usual classes of potential
customers. In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992); and In re Elbaum, supra at 640. There are no
limitations in registrant’s recitation of services in
International Class 38, and thus, we must presume that
registrant’s data and voice telecommunications services
via wireless means may also be used in connection with
personal digital assistants, personal computers, and
cellular telephones.
Applicant’s argument that its services offered under
the MESHNETWORKS mark are offered through “highly
specialized trade channels” is unpersuasive because the
recitation of services does not have any limitations on
applicant’s channels of trade.
As to differences in the identification of goods and
respective recitations of services, it is true that
registrant’s goods in International Class 9 and its
services in International Class 42 focus on computer
hardware, computer software and consultation services
offered in conjunction with telecommunication applications
Serial No. 76365791
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for “vehicles.” However, registrant’s International Class
38 services are not, on their face, similarly restricted
to use with vehicles. Moreover, even if we were, by
implication, to limit registrant’s International Class 38
services to ‘telecommunication involving vehicles,’ and if
we were to conclude thereby that applicant’s services are
not, on their face, identical to registrant’s services, we
would find that the respective services are still closely
related, and still overlapping. That applicant’s
technologies may have broader applications than do
registrant’s technologies does not mean potential
consumers will not mistakenly view one service as a
logical extension of the other. Rather, we find that
purchasers familiar with registrant’s wireless
telecommunications network services, computer hardware and
software marketed under the mark MESHNET would be likely
to believe, upon encountering applicant’s wireless
broadband services of providing for voice and data
transmissions offered under the nearly identical mark
MESHNETWORKS, that the services originated with or were
somehow associated with or sponsored by the same entity.
As to the du Pont factor focusing on the conditions
under which and buyers to whom sales are made, applicant
Serial No. 76365791
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argues that its services offered under the MESHNETWORKS
mark are offered through “highly specialized trade
channels to an extremely sophisticated class of
purchasers.” Applicant then concludes that inasmuch as
“ … consumers exercise a high degree of care in purchasing
expensive and sophisticated communications services, they
will readily distinguish between the services offered
under Applicant’s mark and the cited mark and confusion is
not likely.”
However, no evidence has been proffered in support of
applicant’s contentions as to the extremely high average
cost of these goods and services, with the attendant
conclusion that purchasers will all exercise a high degree
of care in making the purchasing decision, or in support
of the proposition that all of applicant’s customers
comprise an “extremely sophisticated class of purchasers.”
We may infer, for example, from applicant’s and
registrant’s respective recitations of services, that
these transactions between applicant or registrant and
their customers are not impulse purchases. However, the
fact that one of applicant’s (or one of registrant’s)
current customers may be aware of the source of those
services does not eliminate the possibility of confusion.
Serial No. 76365791
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As noted by the Trademark Examining Attorney, the fact
that purchasers are sophisticated in a particular field
does not necessarily mean that they are knowledgeable in
the field of trademarks or immune from source confusion.
In re Decombe, 9 USPQ2d 1812 (TTAB 1988); and In re
Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
While this du Pont factor may well be scored in
applicant’s favor, we do not find that it outweighs all
the other du Pont factors favoring the position of the
Trademark Examining Attorney. In view of the cumulative
effect of the similarity in the marks, the close
relationship of the identified goods and/or services, and
the same or overlapping channels of trade and classes of
purchasers, we find that confusion is likely to occur.
Finally, if we had any doubts regarding whether there
is a likelihood of confusion, we resolve them in favor of
the prior registrant and against the newcomer. Kenner
Parker Toys v. Rose Art Industries, 963 F.2d 350, 22
USPQ2d 1453, 1458 (Fed. Cir. 1992).
Decision: The refusal to register based upon Section
2(d) of the Lanham Act is hereby affirmed.