Technion Communica-tions Corp.

Trademark Trial and Appeal Board

Oct 4, 2000

No. 75531955 (T.T.A.B. Oct. 4, 2000)

Paper No. 10
10/4/00 HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Technion Communications Corporation
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Serial No. 75/531,955
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Charles E. Baxley of Hart, Baxley, Daniels & Holton for
applicant.
Wm. Patrick Shanahan, Trademark Examining Attorney, Law
Office 113 (Meryl Hershkowitz, Managing Attorney).
_______
Before Hohein, Hairston and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Technion Communications Corporation has filed an
application to register the mark TECHNISOFT for “computer
software for use in organizing, deriving, analyzing,
compiling and offering of consumer tendency information
sourced from telephonic databases.”1
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of

1 Serial No. 75/531,955, filed August 6, 1998, 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.
Ser No. 75/531,955
2
confusion with the registered mark TECHNOSOFT for “computer
programs.”2 The refusal has been appealed and both
applicant and the Examining Attorney have filed briefs.
Applicant waived its right to an oral hearing.
We make our determination of likelihood of confusion
on the basis of those of the du Pont factors3 which are
relevant under the circumstances. Here, two key
considerations in our analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods with which the marks are being
used, or are intended to be used. See In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999)
and the case cited therein.
Looking first to the goods, the Examining Attorney
maintains that under the Board’s ruling in In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992), the goods are legally
identical. In line with the determination in Linkvest that
goods identified broadly as “computer programs” would
encompass all varieties of computer programs, the Examining

2 Registration No. 1,797,556, issued October 12, 1993. Section 8
affidavit accepted. The registration originally issued for goods
identified as “computers and computer programs,” but the
identification was amended with the filing of the Section 8
affidavit to “computer programs.”
3 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/531,955
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Attorney considers applicant’s specific computer software
to be covered by the goods of the cited registration.
Applicant insists that the Examining Attorney is
extrapolating the Linkvest decision too far; that the
computer world has greatly changed since 1992; and that the
“sweeping fiat of Linkvest is overdue for a tune-up.”
(Brief, p. 4). Applicant points to present Office practice
in which computer programs are required to be further
identified as to intended purpose. Applicant also argues
that the holding of Linkvest, even if accepted, should be
limited to those cases in which the marks are identical.
It is well established that the question of
likelihood of confusion must be determined on the basis of
the goods as identified in the involved application and the
cited registration, rather than on what any evidence may
show those goods to be. Canadian Imperial Bank of Commerce
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987). The Board simply followed this basic principle
in determining in Linkvest that goods identified in the
cited registration as “computer programs recorded on
magnetic disks” encompassed all such computer programs,
without any limitation as to the kind of program or the
field of use. The Linkvest decision has not become
outdated; the propriety of interpreting goods identified in
Ser No. 75/531,955
4
this broad manner has not been overruled. Although the
Office may no longer permit the issuance of registrations
with such broad identifications, the scope of protection to
which earlier registrations with broader identifications
are entitled has not been diminished. When faced with the
citation of such a registration, an applicant’s recourse
lies in seeking partial cancellation of the registration
under Section 18 of the Trademark Act.
Furthermore, we find no reason to limit the Linkvest
decision to those cases in which the involved marks are
identical. As pointed out by the Examining Attorney, the
similarity or dissimilarity of the goods is a separate
factor to be taken under consideration, independently of
the similarity or dissimilarity of the marks. While the
greater the degree in similarity of the marks, the lesser
may be the degree in similarity of the goods required to
support a holding of likelihood of confusion, the degree of
similarity of the marks per se plays no part in the
determination of the degree of similarity between the
goods.
Thus, we find applicant’s specific computer software
to be fully encompassed by the “computer programs” of the
cited registration. We move forward to a comparison of the
Ser No. 75/531,955
5
marks being used, or intended to be used, on these computer
program or computer software products.4
The Examining Attorney argues that applicant’s mark
TECHNISOFT and registrant’s mark TECHNOSOFT are highly
similar in sound and appearance and present essentially the
same connotation and commercial impression. Both marks are
said to suggest technical software programs.
Applicant, on the other hand, contends that a distinct
difference is created by the presence of the term “NO” in
the middle of registrant’s mark. Applicant argues that
“NO” sends consumers a negative message, whereas the “NI”
of applicant’s mark is lilting and positive. The
difference between “NO” and “NI” is said to be “critical”
to the sound, appearance and commercial impressions of the
marks.
We find the respective marks highly similar in sound
and appearance, the sole difference of one vowel in the
middle of the marks being one which is likely not even to

4 We take judicial notice of the following definition found in
The Computer Glossary (7th ed. 1995):
software program A computer program (computer
application). All computer programs
are software. Usage of the two words
together is redundant, but common.
Thus, we find no merit in applicant’s attempt to distinguish
between registrant’s “computer programs” and applicant’s
“computer software.”
Ser No. 75/531,955
6
be noted, much less remembered by purchasers over a period
of time. The “NO” connotation argued by applicant appears
to be a bit strained and one not likely to be perceived by
purchasers. We further agree with the Examining Attorney
that the marks create similar overall commercial
impressions, there being little distinction in connotation
between “techno” and “techni” when used with products of
this nature.
While applicant further argues that its purchasers are
a group of highly specialized, sophisticated executives who
would not be confused by the respective marks, we would
only reiterate that which was pointed out in Linkvest,
namely, that “expertise in a particular field does not
necessarily endow one with expertise in connection with the
use of a trademark.” This is especially true when
consideration is given to the fact that there is the
potential for use of the marks on very similar or identical
products. Applicant’s additional argument that it is not
aware of any actual confusion is equally unpersuasive, in
view of the fact that there is no evidence that applicant
has as yet even used its mark.
Accordingly, upon consideration of all relevant
factors, and particularly in view of the high degree of
similarity of the respective marks and the overlap of
Ser No. 75/531,955
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registrant’s computer programs with applicant’s particular
software, we find confusion likely if applicant were to use
its TECHNISOFT mark on the goods identified in the
application.
Decision: The refusal to register under Section 2(d)
is affirmed.
G. D. Hohein
P. T. Hairston
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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