SK Telecom Co., Ltd.

Trademark Trial and Appeal Board

Apr 20, 2004

No. 78101321 (T.T.A.B. Apr. 20, 2004)

Mailed: 20 APR 2004
Paper No. 8
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SK Telecom Co., Ltd.
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Serial No. 78101321
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Anthony J. Park, Esq. of McKenna, Long & Aldridge, LLP for
SK Telecom Co., Ltd.
Florentina Blandu, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Walters, Chapman, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On January 7, 2002, SK Telecom Co., Ltd. (applicant)
applied to register the mark CELLPLAN (typed) on the
Principal Register for goods ultimately identified as:
computer software used for the transmission of
electronic signals for wireless telephone, computer
programs used for the transmission of electronic
signals for wireless telephone, computer operating
programs, computers, sound wave telegraph sets,
carrier relay equipment, pagers and communication
servers for computer hardware, wireless telephone,
telephone transmitters of electronics signals in
International Class 9.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78101321
2
The application is based on an allegation of a bona
fide intention to use the mark in commerce.
The examining attorney has refused to register
applicant’s mark on the ground that if the mark was used on
or in connection with the identified goods, it would so
resemble the registered mark:
for “telecommunications services, namely installation and
operation of point to point radio systems" in International
Class 38 and "design and installation of computer software
for use in telecommunications" in International Class 421 as
to be likely to cause confusion, to cause mistake or to
deceive. 15 U.S.C. § 1052(d). The registration contains a
disclaimer of the words “Wireless Global Technologies.”
When the refusal was made final, applicant filed a
notice of appeal.
The examining attorney argues that applicant’s and
registrant’s marks are very similar and the applicant’s
goods and registrant’s services are closely related.
1 Registration No. 2,014,985 issued November 12, 1996, affidavits
under Section 8 and 15, accepted and acknowledged.
Ser No. 78101321
3
Applicant submits that its marks and the registrant’s
mark are dissimilar. Regarding the goods and services,
applicant maintains that “the goods claimed by the
Applicant’s Mark are clearly dissimilar to the services
claimed by the Registrant’s Mark.” Applicant’s Brief at 2
(emphasis deleted).
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 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).
We first look at the similarities or dissimilarities
of the marks. Applicant’s mark is for a single word
CELLPLAN in typed form. The registered mark contains the
same word with a single letter “l” and the words “Wireless
Global Technologies” and a design. When the mark is
Ser No. 78101321
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viewed, the word “CelPlan” is displayed in significantly
larger type than the disclaimed words.
The words CELPLAN and CELLPLAN would likely be pronounced
identically. Applicant’s mark consists only of the word
CELLPLAN and the registered mark is dominated by this word.
In addition to being phonetically identically, these words
appear nearly identical inasmuch as many potential
customers may not even notice the lack of an additional
letter “l” in the registered mark. Also, these words would
have no discernable difference in meaning. Inasmuch as
applicant’s mark is depicted in typed form, any difference
in stylization of the marks is not legally significant.
Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937,
939 (Fed. Cir. 1983) (“[T]he argument concerning a
difference in type style is not viable where one party
asserts rights in no particular display”).
We have also considered the disclaimed matter in the
registered mark, but we are not persuaded that potential
customers would use this matter to distinguish the marks of
Ser No. 78101321
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the applicant and registrant. “Regarding descriptive
terms, this court has noted that the ‘descriptive component
of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’” Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000), quoting, In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985). See also In re
Code Consultants Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(Disclaimed matter is often “less significant in creating
the mark’s commercial impression”). In this case, the
presence of the visually subordinate, disclaimed matter in
the registered mark would not take away from the prominence
of the word CELPLAN. In addition, inasmuch as applicant’s
goods include software for wireless telephones,
registrant’s words “wireless global technologies” would
also be relevant in the context of applicant’s goods.
Finally, we have considered the design element in
registrant’s mark. This simple box design would be
unlikely to make the marks dissimilar in the eyes of
prospective purchasers.
Nonetheless our task is not to simply consider the
individual elements of the marks, particularly
registrant’s, in determining whether there is a likelihood
of confusion. Rather, we must consider the marks in their
Ser No. 78101321
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entirety to determine if they are similar. In this case,
when we consider the marks CELLPLAN and CELPLAN WIRELESS
GLOBAL TECHNOLOGIES and design, we conclude that they are
similar. The differences, primarily the presence of
disclaimed matter and a design in the registrant’s mark, do
not detract from the overall similarity of marks that are
both dominated by the virtually identical word CELPLAN or
CELLPLAN. This term is the prominent feature of the marks
and it would be the term that would be used by customers to
identify the goods or services. See In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997) (Federal Circuit held that, despite the addition of
the words “The” and “Cafe” and a diamond-shaped design to
registrant’s DELTA mark, there was a likelihood of
confusion). See also Wella Corp. v. California Concept
Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and surfer design likely to be confused
with CONCEPT for hair care products).
Another important factor in a likelihood of confusion
determination is the similarity of the goods and services
of the applicant and registrant. Applicant’s goods are
identified as:
computer software used for the transmission of
electronic signals for wireless telephone, computer
programs used for the transmission of electronic
Ser No. 78101321
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signals for wireless telephone, computer operating
programs, computers, sound wave telegraph sets,
carrier relay equipment, pagers and communication
servers for computer hardware, wireless telephone,
telephone transmitters of electronics signals in
International Class 9.
Registrant’s services involve “telecommunications
services, namely installation and operation of point to
point radio systems" in International Class 38 and "design
and installation of computer software for use in
telecommunications” in International Class 42.
Applicant argues that the examining attorney erred in
finding that applicant’s and registrant’s goods and
services are related because the term “telecommunications
field” is “so broad and vague that it is impossible to
know whether it relates to cellular phones” and because
“the Registrant’s Mark simply does not claim any matter
that would even suggest involvement with cellular
telephones.” Applicant’s Brief at 2. First, the term
“telecommunications field” is certainly broad enough to
include cellular or wireless telephones.2 Therefore,
2 “Telecommunications - 1. Meaningful wired/cabled or wireless
transmission and receipt of signals over distance.” Petersen,
Data Telecommunications Dictionary (1999). We take judicial
notice of this definition. University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 78101321
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registrant’s telecommunications services would encompass
wireless telecommunications services.
Second, the examining attorney has submitted evidence
from registrant’s website that indicates that registrant
identifies itself as “a leading provider of wireless
network planning and system optimization software.”
Another website page is entitled “CelPlan Wireless Global
Technologies is providing sophisticated solutions [for]
tomorrow’s wireless world … today!” and begins by referring
to the “wireless communications industry.” Applicant
correctly argues that “the scope of protection of a
registered mark is dictated by the claim of its services
and not by the scope of the registrant’s business
activities.” Applicant’s Brief at 2. We agree with
applicant that we must consider the registrant’s services
as they are described in the identification of services in
the registration. 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,
Ser No. 78101321
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the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
However, the examining attorney’s evidence was not
used to expand the registrant’s services to show that the
registrant was using the cited marks on additional
services. Instead, the evidence makes it clear that
registrant’s telecommunications services are in fact being
used in the wireless telephone field; the specific field
where applicant’s goods would be used.3 Wireless telephones
are a form of telecommunications and, thus, applicant’s
software for transmitting signals by wireless telephones
and registrant’s designing and installing software for
telecommunications would include installing wireless
communication software.
The question is not whether the goods and services are
identical or even used together but whether prospective
purchasers would assume that the goods of applicant and the
services of registrant come from, or are associated with,
the same source. Here, at least some of the prospective
purchasers of applicant’s software for use with wireless
telephone services would likely be identical to purchasers
3 The disclaimed matter in the cited registration “wireless
global technology” also indicates that registrant’s
telecommunications services are directed toward the wireless
telecommunications field.
Ser No. 78101321
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of registrant’s services of installing software for use in
the wireless telecommunications field. Therefore, we agree
with the examining attorney that the goods and services are
related and that the purchasers would likely include many
of the same purchasers.
Finally, applicant argues that it is “a leader in the
area of the development of new technologies for the
transmission of systems and methods of delivery of signals
for wireless phones. It is an elite and small group of
companies worldwide that is capable of developing the
standards by which cell phones operate.” Applicant’s Brief
at 2-3. Even if the purchasers are sophisticated, it would
not lead to a conclusion that there was no likelihood of
confusion. “Human memories even of discriminating
purchasers … are not infallible." In re Research and
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986), quoting, Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
Here the marks contain such similar, dominant words,
CELPLAN and CELLPLAN, and the services and goods are so
closely related, that even these purchasers would likely be
confused. In re Total Quality Group Inc., 51 USPQ2d 1474,
1477 (TTAB 1999) (“[E]ven careful purchasers are not immune
from source confusion”).
Ser No. 78101321
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The record in this case leads us to conclude that when
applicant’s and registrant’s marks are used on the
identified goods and services, confusion would be likely.
If we had any doubts, which we do not, we resolve them, as
we must, in favor of the prior registrant and against the
newcomer. In re Pneumatiques, Caoutchouc Manufacture et
Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729,
729-30 (CCPA 1973); In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Decision: The examining attorney’s refusal to
register applicant’s mark CELLPLAN for the identified goods
because of the cited registration on the ground that it is
likely to cause confusion is affirmed.