Triada, Ltd.

Trademark Trial and Appeal Board

Jan 13, 2000

No. 75209917 (T.T.A.B. Jan. 13, 2000)

Paper No. 10
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB1/13/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Triada, Ltd.
________
Serial No. 75/209,917
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John G. Posa of Gifford, Krass, Groh, Sprinkle,
Anderson & Citkowski for Triada, Ltd.
Robert Clark, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Cissel, Wendel and Holtzman, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Triada, Inc. has filed an application to register the
mark NGRAM TRANSFORM for “computer utility software and
user manuals sold as a unit for information analysis,
namely pattern recognition, database design and data
compression.”1

1 Serial No. 75/209,917, filed December 9, 1996, claiming a first
use date of June 1, 1991 and a first use in commerce date of July
1, 1995.
Ser No. 75/209,917
2
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the following registered marks:
VSAM for computer software providing
automated conversion of mainframe-
based sequential access databases
to relational databases, residing
on mainframe or midrange hardware
platforms;2
Gateway for computer software providing
interface among software
conversion tools;3 and
2000 for computer software providing
automated location of two digit
date fields, records and
references in computer databases
and programs and conversion of the
same to four digit date fields,
records and references.4
All of the registrations were issued to the same entity,
namely, Information Management Resources, Inc.5 An

2 Registration No. 2,036,608, issued February 11, 1997. A
disclaimer has been entered of the term VSAM.
3 Registration No. 2,029,751, issued January 14, 1997. A
disclaimer has been entered of the term GATEWAY.
4 Registration No. 1,993,208, issued August 13, 1996.
5 While applicant has raised an objection in its reply brief to
the fact that the Examining Attorney first pointed out this
identity of ownership in his appeal brief, applicant’s objection
is not well taken. The identity of ownership is self-evident.
Moreover, despite applicant’s contentions to the contrary, the
Examining Attorney has not made any argument that these marks
constitute a family of marks.
Ser No. 75/209,917
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additional registration for the mark TRANSFORM for
“computer programs and user manuals sold therewith” was
cited, but this registration has been cancelled since the
briefs were filed in this case and thus will be given no
consideration.6 Applicant and the Examining Attorney have
filed briefs, but an oral hearing was not requested.
Here, as in any determination of likelihood of
confusion, two key considerations in our analysis are the
similarity or dissimilarity of the respective marks and the
similarity or dissimilarity of the goods and/or services
with which the marks are being used. See In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999).
Insofar as the goods are concerned, the Examining
Attorney has characterized the software products of both
applicant and registrant as software for use in database
conversions. Applicant has made no argument that the goods
are other than related and has in fact pointed to the use
of the term “transform” in the marks as a suggestive
reference to the data conversion function of the involved
software. Thus, we go forward with our analysis on the

6 Registration No. 1,437,154, cancelled under Section 18 of the
Trademark Act on October 4, 1999, following the entry of judgment
against registrant in Cancellation No. 27,962.
Ser No. 75/209,917
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assumption that the software products of applicant and
registrant are related goods.
Applicant’s main focus is upon the respective marks.
Applicant argues that when the marks are considered in
their entireties, the leading term NGRAM in applicant’s
mark NGRAM TRANSFORM creates an entirely different
commercial impression from that of the cited marks. It is
applicant’s contention that its mark would lead purchasers
to believe that NGRAM is a type of TRANSFORM, whereas in
the cited marks, the placement of the term TRANSFORM first
implies that the goods do the “transforming.” Applicant
argues that the only common term, the word “transform,” is
the weak portion of each of the marks, being suggestive of
the function of the goods. According to applicant, in its
mark the unusual “non-word” NGRAM is the dominant term and
must be given the greater weight.
The Examining Attorney, on the other hand, maintains
that the term TRANSFORM is the dominant feature of each of
the cited marks, the terms VSAM and Gateway having been
disclaimed and the term 2000 being a non-literal portion of
the mark. He argues that the cited marks and applicant’s
mark as a whole create similar commercial impressions and
that, when used on related software, this similarity would
Ser No. 75/209,917
5
led purchasers to believe that the goods originate from the
same source.
Although it is true that in determining likelihood of
confusion, marks must be considered in their entireties, it
is well established that there is nothing improper in
giving more or less weight to a particular feature of a
mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749 (Fed. Cir. 1985). While descriptive portions of a mark
cannot be ignored, the fact remains that purchasers are
more likely to rely upon the non-descriptive portion as the
indication of source. Hilson Research Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423 (TTAB 1993).
We agree that in each of the cited marks the term
TRANSFORM is the dominant feature. Although this term may
well be suggestive of the function of the software, the
disclaimed terms VSAM and Gateway are admittedly
descriptive and would have less trademark significance.
The term 2000 likewise appears to have little trademark
significance.
The Examining Attorney has failed, however, to
establish that the term NGRAM, as used in applicant’s mark,
is similarly descriptive, or that it is even suggestive of
the goods. Applicant represents that the term is a “non-
word.” The Examining Attorney has made no evidence of
Ser No. 75/209,917
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record to show that, despite not being listed in the
dictionary, the term has significance in the computer
industry. He has never requested information from
applicant as to any meaning which might be attributed to
the term by others knowledgeable in the field.
Thus, on the record before us, we cannot agree with
the Examining Attorney that that mark NGRAM TRANSFORM
creates a commercial impression similar to the cited marks.
In that this record shows NGRAM to be an apparently
arbitrary term with no recognized meaning in the field, we
can only view the term as the dominant feature of
applicant’s mark. The format is not the same as in the
cited marks; the term TRANSFORM in applicant’s mark is
secondary in significance. Whether or not purchasers would
believe that NGRAM is a type of TRANSFORM, as argued by
applicant, is beside the point. The mark as a whole
creates a different commercial impression.
Accordingly, regardless of the similarity of the goods
upon which the marks are used, we find the dissimilarities
in the registered marks and applicant’s mark, when the
marks are viewed in their entireties, sufficient to obviate
the likelihood of confusion.
Ser No. 75/209,917
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Decision: The refusal under Section 2(d) is reversed.
R. F. Cissel
H. R. Wendel
T. E. Holtzman
Trademark Administrative Judges,
Trademark Trial and Appeal Board
Ser No. 75/209,917
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