Pro Tech Monitoring, Inc.

Trademark Trial and Appeal Board

Jul 18, 2011

No. 77795303 (T.T.A.B. Jul. 18, 2011)

Mailed: July 18, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pro Tech Monitoring, Inc.
________

Serial No. 77795303
_______

Nathan P. Suedmeyer of Larson & Larson PA for Pro Tech
Monitoring, Inc.

Allison Holtz, Trademark Examining Attorney, Law Office 111
(Robert Lorenzo, Managing Attorney).1
_______

Before Holtzman, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Pro Tech Monitoring, Inc. filed an application, as
amended, to seek registration on the Supplemental Register
for the mark OFFENDER TRAX in standard characters for “non-
downloadable software for use in offender monitoring
services” in International Class 9.2

1 The above application was originally examined by another
examining attorney, but was subsequently reassigned to the
attorney whose name is shown to prepare the appeal brief.
2 Application Serial No. 77795303 was filed on August 3, 2009 on
the Principal Register, based upon applicant’s assertion of its
bona fide intent to use the mark in commerce. In response to a
refusal to register based upon mere descriptiveness, applicant
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser. No. 77795303
2
Registration has been finally refused pursuant to
Trademark Act §2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the mark OFFENDERTRAK (in
typed or standard characters) in Registration No. 26419973
for “computer hardware and software providing a centralized
database of inmate, facility and operational information
for jail and correctional facilities” in International
Class 9, as to be likely, if used on or in connection with
the identified goods, to cause confusion, to cause mistake,
or to deceive. Applicant and the examining attorney have
filed main briefs on the issue under appeal.
Likelihood of Confusion
Our determination under Trademark Act §2(d) is based
upon an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie

amended its application to assert April 30, 2008 as a date of
first use of the mark anywhere and in commerce and to seek
registration on the Supplemental Register.
3 Issued on October 29, 2002.

Ser. No. 77795303
3
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999), and cases
cited therein.
We review the relevant du Pont factors as they apply
to this case.
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s OFFENDER TRAX mark and registrant’s
OFFENDERTRAK 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).
In this case, the marks OFFENDER TRAX and OFFENDERTRAK
are nearly identical in appearance and sound. Both marks
share the identical first term OFFENDER, followed by the
Ser. No. 77795303
4
nearly identical terms TRAX and TRAK. The only differences
between the marks are the fact that registrant spells its
mark with a letter “K” in TRAK and without a space between
the terms OFFENDER and TRAK, whereas applicant substitutes
the letter “X” in TRAX and displays its mark with a space
between OFFENDER and TRAX. Thus, both marks display the
same terms with nearly identical novel spellings, and with
applicant’s mark essentially being a plural form of
registrant’s.
The presence or absence of a space between virtually
the same words is not a significant difference. Stockpot,
Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB
1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984)
(“There is no question that the marks of the parties
[STOCKPOT and STOCK POT] are confusingly similar. The word
marks are phonetically identical and visually almost
identical”); and In re Best Western Family Steak House,
Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little
doubt that the marks [BEEFMASTER and BEEF MASTER] are
practically identical”). Also, the word “TRAX” is the
equivalent of the word “TRAK.” Wilson v. Delaunay, 245
F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (there is no
material difference, in a trademark sense, between singular
and plural forms of a word).
Ser. No. 77795303
5
In addition, it is difficult to perceive any
difference in the marks’ connotations. Both marks convey
the ability to track offenders, and this connotation is
borne out by the goods identified under both marks.
Contrary to applicant’s arguments, we conclude that the
marks are nearly identical in appearance, sound and
connotation and, overall, convey highly similar commercial
impressions.
The Goods
In making our determination under the second du Pont
factor we look, as we must, to the goods as identified in
the involved application and cited registration. See
Octocom Systems, Inc. v. Houston 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
Ser. No. 77795303
6
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”)
In this case, applicant’s goods are identified as
“non-downloadable software for use in offender monitoring
services” and registrant’s goods are identified as
“computer hardware and software providing a centralized
database of inmate, facility and operational information
for jail and correctional facilities.” According to
applicant, its goods “allow users to view one or multiple
offenders’ location at the same time on a single mapping
screen” and permit “authorized users to quickly compare
offender tracking points or to review a particular area to
identify any offenders who may have travelled to the area.”4
In other words, applicant’s goods permit the user to
monitor the location of one or more offenders or monitor an
area to identify offenders who may have been in that
location. Registrant’s goods include computer hardware and
software for jails and correctional facilities providing a
database of information regarding inmates as well as the
operational information regarding the facilities
themselves. Because there is no limitation on the types of
inmate information collected by registrant’s goods, it is

4 Applicant’s April 19, 2010 Response to Office Action.

Ser. No. 77795303
7
presumed that it may include information regarding the
location of such inmates within a jail or correctional
facility. Thus, as identified, registrant’s goods provide
information regarding the location of inmates within a
correctional facility and applicant’s goods provide
information regarding offenders outside of correctional
facilities, i.e., in the community.
In addition, the examining attorney has introduced
evidence from commercial and informational Internet
websites suggesting that goods performing functions related
to those performed by both applicant’s and registrant’s
goods are available by the same entities under the same
marks. The following examples are illustrative:

Digital Solutions/Inmate Telephone, Inc.
The Probation & Parole Management System features
five primary modules: Offender Case Management,
Home Monitoring Module, Chronological Case Notes,
Fines & Costs, and Community Service.
Jail Management Solution
From intake to release, information on all
aspects of an inmate’s incarceration are
maintained – including initial intake, charges,
sentencing, property, housing, medical, meal
planning, scheduling, and temporary release to
name a few; and
(disiti.com)

Syscon.net
Over the past 27 years, Syscon has become the #1
global supplier of Offender Management System
(OMS) by following the path of integrated
solutions for integrated problems. Syscon’s
Ser. No. 77795303
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world-beating IAG system creates a seamless
records environment that carries an offender from
pre-trial through to the end of supervision,
whether that be release from detention, parole or
probation. It can be used to fully integrate
offender tracking and monitoring through County
Jails, State Prisons and Community Corrections
agencies of all kinds.
(aboutus.org/Syscon.net)

Based upon the goods recited in the involved
application and the cited registration and the evidence of
record, we find that applicant’s goods are related to those
provided by registrant.
Channels of Trade
It is settled that in making our determination
regarding the channels of trade, we must look to the goods
as identified in the involved application and cited
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., supra; and Paula Payne Products v.
Johnson Publishing Co., supra. In this case, applicant’s
goods are “for use in offender monitoring services” and
registrant’s goods are “for jail and correctional
facilities.” However, there is no evidence of record that
these trade channels are mutually exclusive. Furthermore,
and as noted above, it is not necessary for the goods to be
directly competitive or move in the same trade channels to
support a finding of likelihood of confusion. See In re
International Telephone & Telegraph Corp., supra. In this
Ser. No. 77795303
9
case, applicant and registrant use nearly identical marks
to identify software for offender monitoring on one hand
and hardware and software for a database of, inter alia,
inmate information on the other. The Internet evidence
made of record by the examining attorney shows that these
goods may emanate from a common source and be marketed to
the same consumers.
Sophistication of Purchasers
The final du Pont factor discussed by applicant and
the examining attorney is that of the conditions of sale.
Applicant asserts that its goods would be purchased by
careful and sophisticated users. However, sophisticated
purchasers are not necessarily knowledgeable in the field
of trademarks or immune from source confusion. See In re
Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988). Moreover,
in view of the evidence showing the same entities providing
goods similar to those of both applicant and registrant,
prospective purchasers may mistakenly believe that these
goods could emanate from a single source. In addition,
even if some degree of care were exhibited in making the
purchasing decision, the involved marks OFFENDER TRAX and
OFFENDERTRAK are so nearly identical that even careful
purchasers are likely to assume that the marks identify
goods emanating from a single source.
Ser. No. 77795303
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Weighing all of the evidence of record as it pertains
to the relevant du Pont factors, we find that a likelihood
of confusion exists. 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 Shell Oil Co., supra;
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., supra.
Decision: The refusal to register is affirmed.