Teccor Electronics, Inc.v.Tecore, Inc.

Trademark Trial and Appeal Board

Jan 23, 2003

OPP (T.T.A.B. Jan. 23, 2003)

Mailed: 23 JAN 2003
Hearing: Paper No. 18
06 NOV 2002 AD
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Teccor Electronics, Inc.
v.
Tecore, Inc.
_____
Opposition Nos. 119,231; 119,491; and 119,806
to Application Serial Nos. 75/461,859; 462,132; and 462,155
_____
Marie V. Driscoll and John J. Margiotta of Fross Zelnick
Lehrman & Zissu, P.C. for Teccor Electronics, Inc.
Steven E. Tiller of Whiteford, Taylor & Preston L.L.P. for
Tecore, Inc.
______
Before Simms, Hairston, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On April 3, 1998, Tecore, Inc. (applicant) filed three
applications to register the word TECORE on the Principal
Register. The first application (Serial No. 75/461,859) for
the mark T TECORE and the design is shown below.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition Nos. 119,231; 119,491; and 119,806
2
The application alleges a date of first use and a date
of first use in commerce of December 15, 1993, and it sets
out the following identification of goods and services.
Integrated telecommunications networks comprised of T1
circuit boards, E1 circuit boards, digital signal
processor boards, modems; and computer operating system
software for use in telecommunications networks;
computer hardware for telecommunications networks; and
computer software for use in networking and control of
telecommunications networks in International Class 9.
Project management, namely, telecommunications computer
network design for others; computer consultation,
namely, analysis of telecommunications system traffic;
design and integration of telecommunications computer
systems and networks in International Class 42.
The second application (Serial No. 75/462,155) is for
the mark shown below and the third application (Serial No.
75/462,132) is for the mark TECORE in typed form.
The ‘155 application claims a date of first use and a
date of first use in commerce of December 15, 1993, and the
Opposition Nos. 119,231; 119,491; and 119,806
3
‘132 application claims a date of first use and a date of
first use in commerce of December 15, 1991. The goods and
services in both applications are the same and they are set
out below.
Integrated telecommunications networks comprised of T1
circuit boards, E1 circuit boards, digital signal
processor boards, modems; and computer operating system
software for use in telecommunications networks;
computer hardware for telecommunications networks; and
computer software for use in networking and control of
telecommunications networks in International Class 9.
Business management regarding telecommunication systems
in International Class 35.
Installation and repair of telecommunication systems in
International Class 37.
Telecommunication system education training seminars in
International Class 41.
Project management, namely, telecommunications computer
network design for others; computer consultation,
namely, analysis of telecommunications system traffic;
design and integration of telecommunications computer
systems and networks in International Class 42.
On July 18, 2000, Teccor Electronics, Inc. (opposer)
filed three notices of opposition to the registration of
applicant’s marks alleging that applicant’s marks were
confusingly similar under Section 2(d) of the Trademark Act
to two trademark registrations it owned. 15 U.S.C.
§ 1052(d). The first registration is for the mark TECCOR,
in typed form,1 and opposer’s second registration is for the
stylized “T” design shown below.2
1 Registration No. 1,660,550 issued October 15, 1991, renewed.
2 Registration No. 1,606,198 issued on July 17, 1990, renewed.
Opposition Nos. 119,231; 119,491; and 119,806
4
Both registrations are for the goods set out below:
Electric power controls and semiconductor components
for consumer industrial and commercial applications in
which A.C. or D.C. power is switched and controlled,
including power controls for household appliances, for
lighting, heating, ventilating and air conditioning
equipment, for power hand tools and for business
machines and transient surge protectors for
telecommunications equipment, for household appliances
and for business machines in International Class 9.
Applicant denied that its marks and opposer’s marks are
confusingly similar. On November 2, 2000, the Board
consolidated the three oppositions.
The Record
The record consists of the file of the involved
applications; the trial testimony deposition, with
accompanying exhibits, of David Lark, opposer’s marketing
manager; opposer’s Notice of Reliance on Registration Nos.
1,606,198 and 1,660,550; and the trial testimony deposition,
with accompanying exhibits, of Shiblie O. Shiblie,
applicant’s vice-president.
Both parties have filed briefs, and an oral hearing was
held on November 6, 2002.
Opposition Nos. 119,231; 119,491; and 119,806
5
Background
Opposer seeks to prevent the registration of
applicant’s marks because it argues that applicant’s marks,
when used on applicant’s goods and services, are confusingly
similar to opposer’s marks as used on its goods. Opposer
first argues that it has obtained registration for marks
that are “commercially indistinguishable” from applicant’s
marks. Opp. Br. at 19. In addition, its word mark is an
arbitrary mark without “any descriptive or even suggestive
connotation.” Opp. Br. at 20. Regarding the goods and
services, opposer maintains that applicant’s software and
opposer’s semiconductors are complimentary products.
“Clearly, it may be expected that, in the natural course of
its business, [applicant] will necessarily produce and
market turnkey systems that will, of necessity, incorporate
semiconductors such as those manufactured by [opposer].”
Opp. Br. at 27. Opposer further alleges that both applicant
and opposer focus on “overlaying phone installation in the
rural markets in America.” Opp. Br. at 30. Opposer also
alleges that there has been some actual confusion between
the marks. As a result, opposer submits that the
applications should be denied registration and that the
oppositions should be “in all respects sustained.” Opp. Br.
at 34.
Opposition Nos. 119,231; 119,491; and 119,806
6
Applicant, on the other hand, while submitting that the
marks show distinct differences, concentrates on the
differences in the goods and services. Applicant’s
telecommunication systems cost between $500,000 and $3
million. Opposer’s “switches, although sometimes purchased
in bulk, are relatively simple switches that range in cost
from anywhere between 8¢ and $9.00.” App. Br. at 15.
Applicant also argues that the purchasers of its systems are
sophisticated individuals and that the purchasers of
opposer’s products are “design engineers and buyers who test
the product to ensure that it meets their specifications.”
App. Br. at 15. In addition, applicant claims that there
has been no evidence of actual confusion among potential
customers. As a result, applicant submits that the
oppositions should be denied.
Priority
Priority is not an issue here in view of opposer’s
ownership of two registrations for marks containing either
the word TECCOR or a T design. See King Candy Co. v. Eunice
King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974).
Likelihood of Confusion
The main issue in this case is whether applicant’s
marks are confusingly similar to opposer’s marks. We, of
course, analyze the issue of the likelihood of confusion in
Opposition Nos. 119,231; 119,491; and 119,806
7
light of the factors set forth in In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).
We start with the marks themselves. Applicant’s marks
consist of the word TECORE in typed form and the following
marks in special form:
Opposer’s marks consist of the word TECCOR in typed
form and the following stylized mark:
Applicant points out that the words TECORE and TECCOR
are spelled differently and it argues that the marks sound
differently and that “a mere side-by-side comparison of the
design marks shows distinct differences.” App. Br. at 14.
While we agree that there are differences in spelling
between the words, these differences are slight and likely
to be overlooked by potential customers. Overall, the words
look similar, and while “there is no correct pronunciation
Opposition Nos. 119,231; 119,491; and 119,806
8
of a trademark,” these marks would likely sound similar when
they are pronounced. In re Belgrade Shoe Co., 411 F.2d
1352, 162 USPQ 227, 227 (CCPA 1969). See also Interlego AG
v. Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862, 1863
(TTAB 2002). In this case, opposer’s mark has been
pronounced by others with both a soft “E” and as “T-cor.”
Lark dep. at 8. In addition, since the words are arbitrary,
they would not create different commercial impressions based
on differences in their meanings. See Lark dep. at 8
(“[D]oes Teccor mean anything? A. No.”); Shiblie dep. at 45
(The name TECORE is “a contraction of the words
telecommunications, consulting and research.”).
Finally, both applicant and opposer have marks shown in
typed form so that there is no distinction between the marks
based on the way the marks are displayed. Therefore, we
find that the words TECCOR and TECORE are very similar in
sound, appearance, meaning, and commercial impression, and
these similarities far outweigh any differences between
these word marks.
Opposer also relies on its stylized “T” registration as
a basis for arguing that its marks and applicant’s marks are
similar. While the two “T” designs are different, the fact
that both applicant and opposer use stylized “T” designs
with their word marks enhances the likelihood of confusion.
Opposition Nos. 119,231; 119,491; and 119,806
9
Next, we must compare the goods and services as
described in the applications and the registrations to
determine if there is a likelihood of confusion. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). Applicant seeks
registration for the following goods and services3:
Telecommunications networks comprised of T1 circuit
boards, E1 circuit boards, digital signal processor
boards, modems; and computer operating system software
for use in telecommunications networks; computer
hardware for telecommunications networks; and
computer software for use in networking and control of
telecommunications networks in International Class 9.
Business management regarding telecommunication systems
in International Class 35.
Installation and repair of telecommunication systems in
International 37.
Telecommunication system education training seminars in
International Class 41.
Project management, namely, telecommunications computer
network design for others; computer consultation,
namely, analysis of telecommunications system traffic;
design and integration of telecommunications computer
systems and networks in International Class 42.
Opposer’s registrations contain the following goods:
Electric power controls and semiconductor components
for consumer industrial and commercial applications in
which A.C. or D.C. power is switched and controlled,
including power controls for household appliances, for
lighting, heating, ventilating and air conditioning
equipment, for power hand tools and for business
machines and transient surge protectors for
3 All three applications seek registration for the goods and
services in International Classes 9 and 42. The application for
TECCOR and stylized “T” design (Ser. No. 75/461,859) does not
contain the services in International Classes 35, 37, and 41.
Opposition Nos. 119,231; 119,491; and 119,806
10
telecommunications equipment, for household appliances
and for business machines in International Class 9.
First, we will address applicant’s goods in
International Class 9. It is apparent that applicant and
opposer’s goods are marketed in the telecommunications
industry. Applicant’s goods are telecommunications
networks, software for use in telecommunications networks
and computer hardware for telecommunications networks.4
Opposer’s goods include electric power controls and
semiconductor components for commercial applications
including power controls for business machines and transient
surge protectors for telecommunications equipment.
While both parties operate in the same industry, this
by itself does not establish that the goods are related.
Electronic Design & Sales, Inc. v Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992)
(“Although opposer’s services and applicant’s goods are
purchased by some of the same large corporations, the
individual departments therein may be as independent in
their purchasing activities as were the hospital departments
in Astra [Pharmaceutical Products v. Beckman Instruments,
4 At oral argument, applicant maintained that its identification
of goods set out only one “good,” an integrated network
containing all of the items in the identification of goods. We
disagree with applicant’s interpretation of its identification of
goods because the identification as written separates the goods
into integrated telecommunications networks, computer hardware,
and computer software. Applicant argues that it simply
integrates other companies’ products into its networks and that
it does not use its trademarks on its goods. In response,
Opposition Nos. 119,231; 119,491; and 119,806
11
718 F.2d 1201, 220 USPQ 786 (1st Cir. 1986)]” (emphasis in
original).
Here, we note that both applicant and opposer primarily
market their goods to commercial purchasers as opposed to
ordinary consumers. Applicant’s systems cost at least
$250,000. See Shiblie dep. at 55. While opposer’s goods
are much less expensive (typically costing between 8¢ and
$9, Lark dep. at 19), the purchasers of these products are
sophisticated purchasers who normally work for corporations.
Lark dep. at 16 (“[U]sually the first contact is with the
design engineer… They have a circuit that they need to
design and they know that they have a function that requires
something that we can satisfy”).
However, both applicant and opposer market their
products to the telecommunications industry and specifically
the rural telecommunications industry. Opposer’s
advertising shows that its TECCOR and stylized T marks are
used on goods described as:
Telecommunications Network Protection
… The T5 Series plug-in modules can be used with
industry-standard five pin protection blocks in
applications at central offices (telephone exchanges),
remote locations, building entrances, and customer
premises.
Lark, Ex. 4.
opposer pointed out that applicant apparently uses at least one
of its marks on computer hardware. Shiblie Ex. 5.
Opposition Nos. 119,231; 119,491; and 119,806
12
Opposer’s goods are also described in the following
way. “In telecommunications products, SIDACtors are
connected across tip and ring, typically behind a current-
limiting device such as a slow-blow fuse. Common
applications include: central office line cards, T1/E1; ISDN
and DSL transmission equipment, Customer Premises Equipment
(CPE) such as phones, modems, and adjunct boxes, PBXs
[private branch exchanges], KSUs [key system units] and
other switches….” Lark, Ex. 1, p. 3. Applicant’s network
systems involving T1 circuit boards and opposer’s goods are
both designed to be used with T1 lines.
Furthermore, while applicant stresses that its goods
and services are designed for wireless telecommunication
systems, applicant’s identifications of goods are not
limited in this way. Applicant’s integrated
telecommunications networks include wired and wireless
telecommunications networks. While applicant may only
market its goods to rural telecommunications entities and
make its products for wireless networks, applicant’s actual
use of its product does not limit its identification of
goods. We must consider the services as they are identified
in the application and registration. Paula Payne Products
v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
Opposition Nos. 119,231; 119,491; and 119,806
13
respective descriptions of goods”); In re Dixie Restaurants,
105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)
(punctuation in original), quoting, Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1816 (Fed. Cir. 1987) (“’Likelihood of confusion must
be determined based on an analysis of the mark applied to
the … services recited in applicant’s application vis-à-vis
the … services recited in [a] … registration, rather than
what the evidence shows the … services to be’”). See also
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”).
Furthermore, we note that applicant’s system “is a
scalable switching platform that allows for interconnection
from wireless networks such as cellular, PCS and satellite,
to Public Switched Telephone Network (PSTN).” Shiblie, Ex.
2, p. 2; See also Shiblie Ex. 11, p. 2 (“TECORE - Scalable
Switching Solutions for the Converging Wireless and Wireline
Networks… TECORE provides the first switching platform on
Opposition Nos. 119,231; 119,491; and 119,806
14
the market that can simultaneously support multiple wireless
protocols, wireline applications and a fully integrated
prepaid solution”). Thus, applicant’s system is designed to
connect wireless and non-wireless phone systems. Engineers
and others who work on applicant’s telecommunications
systems are likely to believe that opposer’s semiconductor
components and surge protectors they would be purchasing
come from the same source. Furthermore, the same engineers
are likely to be involved in purchasing applicant’s
“computer hardware for the telecommunications industry” and
“computer software for use in networking and control of
telecommunications networks” and in the purchase of
opposer’s semiconductors and surge protectors that could be
used with these telecommunications network products.
While we may assume that the purchasers in this case
will in most instances be sophisticated purchasers who “may
be expected to exercise greater care," we do not think this
sophistication is enough to avoid confusion between the
goods in International Class 9. Electronic Design, 21
USPQ2d at 1392, quoting Pignons S.A. de Mecanique de
Precision v. Polaroid Corp., 657 F.2d 482, 489, 212 USPQ
246, 252 (1st Cir. 1981). Even sophisticated purchasers
would likely be confused when highly similar marks are used
on related goods. Octocom Systems, 16 USPQ2d at 1787.
Opposition Nos. 119,231; 119,491; and 119,806
15
Opposer also alleges that there has been actual
confusion in this case because twice, at large
telecommunications shows, either a contractor setting up
opposer’s booth mistook opposer for applicant or another
time a show employee reported that opposer had already paid
its exhibition fee when in fact it had not, but applicant
had. Opp. Br. at 33; Lark dep. at 46-47. We agree with
applicant that neither of these incidents involved potential
customers nor were the marks viewed in relationship to the
parties’ goods and services.
Applicant argues that opposer has only recently moved
into the telecommunications market (Br. at 24-25). Even if
this were true, we note that opposer’s identification of
goods in its registrations specified that its goods were,
inter alia, “for telecommunications equipment.” Finally,
applicant submits that “[d]uring eleven (11) years of
concurrent use, no instances of actual confusion have
occurred.” Br. at 21. The absence of actual confusion does
not mean that there is no likelihood of confusion. Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218
USPQ 390, 396 (Fed. Cir. 1983); J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed.
Cir. 1991). Because of applicant’s limited sales, it is not
surprising that there was no evidence of actual confusion by
potential purchasers.
Opposition Nos. 119,231; 119,491; and 119,806
16
Therefore, we conclude that there is a likelihood of
confusion between applicant’s marks when used with the goods
in International Class 9 and opposer’s marks when used on
its Class 9 goods.
Next, we will consider whether applicant’s services are
related to opposer’s goods. Applicant’s services include
business management regarding telecommunication systems,
installation and repair of telecommunication systems,
telecommunication system education training seminars, and
project management, namely, telecommunications computer
network design for others in International Classes 35, 37,
41, and 42. Here, the record is much less persuasive
regarding the relatedness of these services to opposer’s
goods. While these services are in the telecommunications
field, the record does not indicate why prospective
purchasers of opposer’s surge protectors and semiconductor
components that cost between 8¢ and $9 would believe that
the same or related entity was also providing business
management, installation and repair of telecommunication
systems, education training seminars, and project management
services. We, of course, decline to hold that all
telecommunication goods and services are per se related. In
re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (“[W]e think
that a per se rule relating to source confusion vis-à-vis
computer hardware and software is simply too rigid and
Opposition Nos. 119,231; 119,491; and 119,806
17
restrictive an approach and fails to consider the realities
of the marketplace”).
We find the Electronic Design case to be particularly
relevant. In that case, the Court reversed a finding of
likelihood of confusion noting that “although the two
parties conduct business not only in the same field but also
with some of the same companies, the mere purchase of the
goods and services of both parties by the same institution
does not, by itself, establish similarity of trade channels
or overlap of customers.” 21 USPQ2d at 1391. The Court
went on to determine that “it cannot be presumed, as the
Board apparently did, that the general computer services are
selected by the same individuals who select battery chargers
and power supplies.” Id. Opposer’s goods are typically
sold by contacting a design engineer. Lark dep. at 17.
Unlike the goods in International Class 9, we cannot
conclude from the record that the same person selecting
applicant’s business management, installation and repair,
education training seminars, and project management services
would overlap with the design engineers and similar
employees purchasing opposer’s semiconductor components and
surge protectors. It is not even clear how the same person
would encounter both marks. “We are not concerned with mere
theoretical possibilities of confusion, deception, or
mistake or with de minimis situations but with the
Opposition Nos. 119,231; 119,491; and 119,806
18
practicalities of the commercial world, with which the
trademark laws deal.” Witco Chemical Co. v. Whitfield
Chemical Co., 418 F.2d 1402, 164 USPQ 43, 44-45 (CCPA 1969).
We have considered that there is no evidence of any
third-party uses of similar marks5 and that opposer’s mark
is a coined term that has no meaning in the trade. However,
despite the similarities of the marks, the significant
differences in opposer’s goods and applicant’s services in
International Class 35, 37, 41, and 42 obviate the
likelihood of confusion.
Decision: The opposition to the registration of the
goods in International Class 9 in Opposition No. 119,231;
119,491; and 119,806 is granted. The opposition to the other
classes is dismissed.
5 We have not considered applicant’s reference to two websites
that it says involve other uses of nearly identical trademarks
because they have not previously been made of record. We note in
passing that log processing services and hardwood floors on their
face appear to be unrelated to the goods and services in this
case.