SnapTrack, Inc.

Trademark Trial and Appeal Board

Oct 3, 2001

No. 75548099re (T.T.A.B. Oct. 3, 2001)

5/29/01
Paper No. 9
TJQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re SnapTrack, Inc.
________
Serial No. 75/548,099
_______
Lori M. Stockton and Lori N. Boatright of Blakely,
Sokoloff, Taylor & Zafman for applicant.
James A. Rauen, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______
Before Simms, Cissel and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by SnapTrack, Inc. to
register the mark SMARTSERVER for “global positioning
systems hardware and software, namely gps circuits, hand-
held receivers, antenna, modems, displays, transmitters,
processors, mobile receivers, ground station receivers,
satellites, base station systems in the nature of computer
servers and relays, network of reference gps receivers,
operating software for use therewith, and gps software in
the nature of navigation, location, tracking, mapping and
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/548,099
2
timing software; telecommunications systems in the nature
of satellites, wireless handsets, receivers and gps
technology incorporated therewith for use in a wireless
network” (in International Class 9) and “communications
services and telecommunications services namely using
global positioning systems to provide for navigation,
location, tracking, mapping and timing objectives for
users; providing the electronic transmission of data and
voice via global communications network and wireless
networks; providing telecommunications connections to a
global computer network; electronic transmission of voice
messages and data by telephone or network communications”
(in International Class 38).1
The Trademark Examining Attorney refused registration
under Section 2(d) on the ground of likelihood of confusion
with two previously issued registrations, owned by
different entities. The cited marks are SMARTSERVE for
“maintenance and/or repair of telecommunications equipment”2
and the mark shown below
1 Application Serial No. 75/548,099, filed September 4, 1998,
based on an allegation of a bona fide intention to use the mark
in commerce.
2 Registration No. 1,924,803, issued October 3, 1995.
Ser No. 75/548,099
3
for “communications services, namely, providing access to
data processing and communications platforms that link
businesses, consumers and professionals to information
service and transactional service providers.”3
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
The Examining Attorney maintains that applicant’s mark
is similar to each of the cited marks, and that the goods
and services sold thereunder are related, all being in the
telecommunications field. The Examining Attorney is not
persuaded by the coexistence of the cited registrations and
the third registration which applicant later introduced.
In connection with the relatedness of the goods and
services, the Examining Attorney relied upon third-party
registrations, which show, according to the Examining
Attorney, that the same entity has registered the same mark
for the types of goods and services involved in this
appeal. The Examining Attorney also introduced excerpts
from the Yellow Pages telephone directory showing listings
of companies which offer both telecommunications equipment
and maintenance thereof.
3 Registration No. 2,115,466, issued November 25, 1997. The term
“Online” is disclaimed apart from the mark.
Ser No. 75/548,099
4
Applicant contends that there are differences between
its mark and the cited marks, and that the cited marks are
more similar to one another than they are to applicant’s
mark. In this connection, applicant points to the
coexistence of the two cited marks, as well as a third
registered mark that it introduced during the prosecution
of this application. Applicant further argues that there
are significant differences, including channels of trade,
between its goods and services and the services recited in
each of the cited registrations. Applicant asserts that
consumers of global positioning systems are sophisticated
and knowledgeable and are very focused on their specialized
needs. Attached to applicant’s reply brief is a dictionary
listing of the term “global positioning system,” commonly
referred to as “gps,” of which we take judicial notice.
The term is defined, in part, in Newton’s Telecom
Dictionary (15th ed. 1999) as follows:
A system to allow us all to figure out
precisely where we are anywhere on
earth. The GPS will eventually consist
of a constellation of 21 satellites
orbiting the earth at 10,900 miles--
they circle the earth twice a day. In
a way, you can think of them as “man-
made stars” to replace the stars that
we’ve traditionally used for
navigation...we figure our position on
earth by measuring our distance from a
group of satellites in space. The
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satellites act as precise reference
points.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. 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 similarities between
the goods and services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Registration No. 1,924,803
We first turn to compare the marks SMARTSERVER and
SMARTSERVE. The marks are virtually identical in terms of
sound, appearance and meaning, the only difference being
the additional last letter “r” in applicant’s mark.
Although there is a suggestive quality to the marks, the
record lacks evidence of third-party uses or registrations
in the telecommunications field other than the two cited
marks and one third-party registration introduced by
applicant. We find that the involved marks are similar so
that, if applied to related goods and/or services,
confusion would be likely to occur.
Ser No. 75/548,099
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Insofar as the goods and services are concerned, we
start with the premise that they need not be identical or
even competitive to support a holding of likelihood of
confusion. It is sufficient that the goods and/or services
are so related or that conditions surrounding their
marketing are such that they are encountered by the same
persons who, because of the relatedness of the goods and/or
services and the similarities between the marks, would
believe mistakenly that the goods and/or services originate
from or are in some way associated with the same source.
See, e.g., In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978).
Registrant’s “maintenance and/or repair of
telecommunications equipment” services are not limited and,
therefore, the services are broad enough to include
maintenance and repair of global positioning
telecommunications systems of the type intended to be sold
by applicant. See: CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 199 (Fed. Cir. 1983); and In re Elbaum, 211 USPQ
639, 640 (TTAB 1981)[it is presumed that in scope the
registration encompasses all types of such services, and
that the services move in all channels of trade that would
be normal for such services and that they would be
purchased by all potential buyers thereof]. The evidence
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submitted by the Examining Attorney (Yellow Pages listings
and third-party registrations) suggests that the same
entities offer both telecommunications equipment and
maintenance/repair thereof under the same mark.4 See: In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993).
Further, registrant’s services are related to
applicant’s services of “providing the electronic
transmission of data and voice via global communications
network and wireless networks; providing telecommunications
connections to a global computer network; [and] electronic
transmission of voice messages and data by telephone or
network communications.” Registrant’s recitation of
services is broad enough, as indicated above, to cover
maintenance of the type of equipment used in the rendering
of applicant’s telecommunications services. Thus, the same
classes of purchasers would be encountering the virtually
identical marks.
Given the similarities between the marks and goods
and/or services as discussed above, the possible
sophistication of purchasers would not ensure against the
likelihood of confusion. Firstly, there is no support in
4 In considering this evidence, we recognize that none of the
examples involves global positioning systems.
Ser No. 75/548,099
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the record for applicant’s assertions regarding the
purported sophistication of purchasers. Moreover,
telecommunications goods and services of the type involved
here undoubtedly are offered to a wide range of consumers,
not all of whom are likely to be knowledgeable in the
field.
Registration No. 2,115,466
Although there are differences between applicant’s
mark SMARTSERVER and registrant’s mark SMARTSERV ONLINE and
design, the differences are outweighed by the points of
similarity. Registrant’s mark is dominated by the term
“SMARTSERV.” This dominant portion is virtually identical
to applicant’s mark SMARTSERVER, differing only in the last
two letters “er.” Being the first term in registrant’s
mark, it is the portion that is most likely to be
remembered by consumers and to be used in calling for the
services. Further, although we have considered the marks
in their entireties, “there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided [that]
the ultimate conclusion rests on consideration of the marks
in their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For example,
“that a particular feature is descriptive or generic with
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respect to the involved goods or services is one commonly
accepted rationale for giving less weight to a portion of a
mark...” Id. at 751.
With respect to registrant’s mark, the disclaimed term
“Online” clearly is generic and subordinate to the term
“SMARTSERV.” Although we have considered the disclaimed
portion of registrant’s mark, as well as the design
feature, we do not find that they distinguish registrant’s
mark from applicant’s mark in any meaningful way.
In sum, the general overall commercial impressions
engendered by the marks are similar such that, if the marks
were used in connection with similar goods and/or services,
confusion would be likely to occur.
Registrant’s services are identified as
“communications services, namely, providing access to data
processing and communications platforms that link
businesses, consumers, and professionals to information
service and transactional service providers.” We find that
these services are similar to applicant’s communications
and telecommunications services. More specifically,
applicant’s Class 38 services, as worded, are substantially
Ser No. 75/548,099
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similar, if not virtually identical, to registrant’s
services.5
Given the similarities between the marks and goods
and/or services as discussed above, the possible
sophistication of purchasers, as in the case with the other
cited registration, would not ensure against the likelihood
of confusion. Firstly, there is no support in the record
for applicant’s assertions regarding the purported
sophistication of purchasers. Moreover, telecommunications
goods and services of the type involved here undoubtedly
are offered to a wide range of consumers, not all of whom
are likely to be knowledgeable in the field.
Lastly, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
5 We suppose that this was the genesis of applicant’s suggestion
in its reply brief that the Class 38 services be amended to
indicate that they are offered for “global positioning.” An
amendment at this late juncture of the appeal process is not
warranted. Further, registrant’s services are not restricted to
any specific type of communications services and, thus, are broad
enough to encompass such services relating to global positioning
telecommunications services.
Ser No. 75/548,099
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Decision: The refusals to register are affirmed.