RiverRock Systems, Ltd.

Trademark Trial and Appeal Board

Oct 22, 2001

No. 75676473 (T.T.A.B. Oct. 22, 2001)

10/22/01 Paper No. 10
CEW

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re RiverRock Systems, Ltd.
___________

Serial No. 75/676,473
___________

Roy W. Hardin of Locke Liddell & Sapp for RiverRock
Systems, Ltd.

M. Catherine Faint, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
____________

Before Walters, Chapman and Rogers, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

RiverRock Systems, Ltd. has filed a trademark
application to register the mark RIVERROCK RADIX for
“computer software and hardware for providing
telecommunications operations support, namely, customer
care, billing, rating, and provisioning functions.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15

1 Serial No. 75/676,473, in International Class 9, filed April 7, 1999,
based on an allegation of a bona fide intention to use the mark in
commerce.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/676,473

2
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the previously registered marks shown below,
all owned by Radix Corporation, that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
Registration No. 1,026,998 for “designing and
preparation of computer programs and the
implementation and maintenance of computer
systems”2:

Registration No. 1,632,970 for “computers,
computer peripherals, computer operating
programs, computer utility programs, computer
programs for use in encoding, transmitting and
processing data from remote locations, printers,
optical character readers, bar code scanners,
couplers, multiplexers, telephone modems, and
interface cables”3:

2 Registration No. 1,026,998 issued on December 9, 1975, in
International Class 42. Sections 8 and 15 affidavits accepted and
acknowledged, respectively. Renewed for a period of ten years from
December 9, 1995. The mark is lined for the color blue.

3 Registration No. 1,632,970 issued January 29, 1991, in International
Class 9. Sections 8 and 15 affidavits accepted and acknowledged,
respectively. Renewed for a period of ten years from January 29, 2001.

Serial No. 75/676,473

3

Registration No. 1,637,427 for “computers,
computer peripherals, computer operating
programs, computer utility programs, computer
programs for use in encoding, transmitting and
processing data from remote locations, printers,
optical character readers, bar code scanners,
couplers, multiplexers, telephone modems, and
interface cables”4:

Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
Our determination under Section 2(d) is based on 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). In

4 Registration No. 1,637,427 issued March 12, 1991, in International
Class 9. Sections 8 and 15 affidavits accepted and acknowledged,
respectively. Renewed for a period of ten years from March 12, 2001.
Serial No. 75/676,473

4
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 and
differences in the marks.” Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976). See also In re Azteca Restaurant Enterprises,
Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited
therein.
We turn, first, to a determination of whether
applicant’s mark and the registered marks, when viewed in
their entireties, are similar in terms of appearance,
sound, connotation and commercial impression.
The Examining Attorney notes that applicant’s and
registrant’s marks share the term RADIX. She contends
that RADIX is the dominant portion of each of the
involved marks; that applicant has merely added its house
mark, RIVERROCK, to the dominant portion of registrant’s
marks, RADIX; and that the commercial impressions of the
marks are the same. The Examining Attorney agrees with
applicant that “radix” is a common term meaning “the base

Serial No. 75/676,473

5
of a number system,”5 but she contends that “radix” has no
meaning in relation to computers or software and, thus,
it is an arbitrary term in connection with applicant’s
goods and registrant’s goods and services.
Applicant contends that the only common portion of
the marks is the term “radix”; that RIVERROCK is the
dominant portion of applicant’s mark because it is the
first term in the mark and it is fanciful; that the
marks, considered in their entireties, including the
stylized “R” and design portions of the registered marks,
engender totally different commercial impressions; and
that “radix” is a common term that is neither fanciful
nor arbitrary.6
The test 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 goods or services
offered under the respective marks is likely to result.

5 We take judicial notice of the recited definition, from Webster’s
Ninth New Collegiate Dictionary, which is referenced in applicant’s
brief.

6 In its brief, applicant referenced third-party registrations and the
Examining Attorney objected thereto on the grounds that the evidence is
untimely and that a list of registrations is not the proper form for
submission of such evidence. We agree with the Examining Attorney and
have not considered this evidence. See Trademark Rule 2.142(d); and In
re Duofold, 184 USPQ 638 (TTAB 1974).
Serial No. 75/676,473

6
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).
Furthermore, although the marks at issue must be
considered in their entireties, it is well settled that
one feature of a mark may be more significant than
another, and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
We agree with the Examining Attorney that the term
“radix” is arbitrary as applied to the goods and services
in this case. Applicant has provided no information or
evidence, other than a definition of “radix” as a
mathematical term, that suggests otherwise. The mere
fact that “radix” is a mathematical term does not
establish a suggestive or descriptive connotation of
“radix” in connection with the goods and services
involved herein. Further, we find it unnecessary to
determine that one term is or is not dominant. Rather,
considering the marks in their entireties, it is clear to
us that the marks are substantially similar so that
contemporaneous use on similar or related goods and
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7
services is likely to cause confusion. Neither the term
RIVERROCK in applicant’s mark nor the design feature and
term CORPORATION in the registered marks is sufficient to
distinguish these marks.
Therefore, we turn our consideration to the goods
and services involved in this case. The Examining
Attorney contends that applicant’s goods are related;
that both applicant and registrant’s goods include
computer hardware and registrant’s goods are not limited
as to channels of trade or class of purchasers; that
registrant’s broadly identified computer software
encompasses applicant’s more narrowly defined software;
and that registrant’s channels of trade and classes of
purchasers of its broadly identified goods and services
encompass those of applicant’s goods.
Applicant states that its goods are limited to
products for the telecommunications industry; that its
“focus is on writing and installing software”; and that
applicant does not manufacture hardware, but merely
provides hardware incidental to the installation of its
software. Applicant contends that the registrant’s goods
consist principally of computer hardware, in particular,
handheld hardware devices; that such devices are not
directed to the telecommunications industry; and that any
Serial No. 75/676,473

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software development is only to enable such devices to
function. Applicant maintains that while both applicant
and registrant produce goods “generally related to
computer technology … this similarity alone cannot
establish a similarity of goods sufficient to find a
likelihood of confusion.” Applicant argues that the
trade channels and purchasers of applicant’s and
registrant’s goods are different because applicant’s
goods are directed to the telecommunications industry,
whereas registrant’s goods “are marketed to various
industries.”
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 registrations, rather than what
the evidence shows the goods or services actually are.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See also,
Octocom Systems, Inc. v. Houston Computer Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American 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
Serial No. 75/676,473

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of confusion. Rather, it is enough that 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 could 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 cases cited therein.
While applicant correctly points out that its goods
are specifically for the telecommunications industry, we
cannot consider applicant’s comments that its hardware is
only incidental to the installation of its software.
Applicant’s goods, as identified include both hardware
and software for the telecommunications industry.
Similarly, the cited Registration No. 1,026,998 includes
software design services and the two remaining cited
registrations include both computer hardware and
software. Registrant’s goods and services are not
limited to any particular industry and, thus, encompass
such goods and services rendered to the
telecommunications industry. Registrant’s goods and
services also could be reasonably construed as products
Serial No. 75/676,473

10
and services that can be used in operations support.
Therefore, based on the identifications of goods and
services, applicant’s goods are encompassed by
registrant’s goods and related to registrant’s services.
We conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, and registrant’s marks, their contemporaneous use
on the overlapping and related goods and services
involved in this case is likely to cause confusion as to
the source or sponsorship of such goods and services.
Decision: The refusal under Section 2(d) of the
Trademark Act is affirmed.