Wacom, Co. Ltd.v.Walcom, Inc.

Trademark Trial and Appeal Board

Jan 30, 2002

No. 91118149 (T.T.A.B. Jan. 30, 2002)

1/30/02 Paper No.
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EWH

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

Trademark Trial and Appeal Board
_____________

Wacom, Co. Ltd. v. Walcom, Inc.
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Opposition No. 118,149 to Application Ser. Nos.
75/433,700 and 75/433,701 filed February 13, 1998
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Leonard D. DuBoff for Wacom, Co. Ltd.

Gregory D. Seeley for Walcom, Inc.
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Before Hanak, Walters and Drost, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Walcom, Inc. (applicant) seeks to register WALCOM in
typed drawing form and WALCOM and design in the form
shown below for “rental of computer hardware to companies
for employee computer training; leasing computer
facilities to companies for employee computer training;
registration of participants for others at computer
conferences and seminars; computer consulting services to
businesses for the optimum layout of computer hardware.”
Both applications were filed on February 13, 1998 with a
claimed first use date for WALCOM per se of August 19,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
1995 and a claimed first use date of WALCOM and design of
November 15, 1997.
Opp. No. 118,149

Wacom, Co. Ltd. (opposer) filed a notice of
opposition alleging that prior to August 1995, it both
used and registered the mark WACOM for “computer input
hardware, namely, digitizers.” Continuing, opposer
alleged that the contemporaneous use of its mark and
applicant’s marks for their respective goods and services
is likely to cause confusion, deception and mistake among
consumers. (Notice of opposition paragraph 13). While
the notice of opposition did not make specific reference
to Section 2(d) of the Trademark Act, it is clear that
this is the basis for the notice of opposition.
Subsequently, applicant filed an answer which denied
the pertinent allegations of the notice of opposition.
Opposer properly made of record a certified status and
title copy of its Registration No. 1,353,811 for the mark
WACOM depicted in typed drawing form for “computer input
hardware, namely, digitizers.” This registration was
issued on August 13, 1985. This is the only evidence of
record. Applicant
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Opp. No. 118,149

did not make of record any evidence. Opposer filed its
brief in a timely fashion. Applicant filed an untimely
brief, which opposer has moved to strike. However, we
have elected to consider applicant’s brief.
Because opposer has properly made of record a
certified status and title copy of its aforementioned
registration of WACOM for “computer input hardware,
namely, digitizers,” priority rests with opposer. King
Candy Co. v. Eunice King’s Kitchen Inc., 496 F.2d 1400,
182 USPQ 108 (CCPA 1974). Hence, the only issue in this
proceeding is one of likelihood of confusion.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the
similarities of the marks and the similarities of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”).
Considering first the marks, they are almost
identical. Opposer’s mark WACOM depicted in typed
drawing form and applicant’s mark WALCOM depicted in
typed drawing form
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Opp. No. 118,149

differ simply by one internal letter. As for applicant’s
other mark -- WALCOM depicted in block letters within a
simple rectangle -- we find that it, too, is almost
identical to opposer’s mark WACOM. Consumers viewing the
marks WACOM and WALCOM could easily overlook the L in
applicant’s marks. Thus, in terms of visual appearance,
opposer’s mark and applicant’s marks are almost
identical.
Likewise, in terms of pronunciation, we find that
opposer’s mark and applicant’s two marks are again almost
identical. Of course, in terms of pronunciation, the
rectangle in the second of applicant’s marks would not be
pronounced. Opposer’s mark and applicant’s marks are
almost identical, especially when one takes into account
“that there is no correct pronunciation of a trademark.”
In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA
1969).
Finally, in terms of meaning or connotation, we find
that both marks are almost identical in that they either
lack any meaning or they would be perceived as almost
identical surnames. In this regard, we note that at page
3 of its brief applicant states that the mark “WALCOM is
derived from the owner’s name.”
In sum, the first Dupont “factor weighs heavily
against
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Opp. No. 118,149

applicant” because opposer’s mark and applicant’s two
marks are almost identical. In re Martin’s Famous Shoppe
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984).
Turning to a consideration of opposer’s goods and
applicant’s services, we note that because the marks are
almost identical, their contemporaneous use can lead to
the assumption that there is a common source “even when
[the] goods or services are not competitive or
intrinsically related.” In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). However, in
this case we find that opposer’s goods and at least
certain of applicant’s services are clearly related. As
set forth in its registration, opposer’s goods are
“computer input hardware, namely, digitizers.” This
identification of goods is broad enough to include
digitizers used for employee computer training. Certain
of applicant’s services as set forth in its two
applications are the “rental of computer hardware to
companies for employee computer training.” Because there
is no restriction on the type of computer hardware in the
two applications, this computer hardware encompasses,
among many other types of hardware, digitizers.
Thus, opposer’s identification of goods is broad
enough
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Opp. No. 118,149

to include the sale of digitizers for employee computer
training. Likewise, applicant’s identification of
services is broad enough to include the rental of
computer hardware, including digitizers, to companies for
employee computer training. There is very little
difference in the sale of a digitizer for employee
computer training and the rental of a digitizer for
employee computer training. Accordingly, at least
certain of applicant’s services are closely related to
opposer’s goods.
Given the fact that opposer’s mark and applicant’s
marks are almost identical and the fact that opposer’s
goods and applicant’s services are, at least in part,
closely related, we find that there exists a likelihood
of confusion. Moreover, while we have no doubt that
there exists a likelihood of confusion, we feel compelled
to comment upon the following statement made by applicant
at page 4 of its brief: “Doubt as to the likelihood of
confusion should not be resolved in favor of the senior
user.” Such is not the law. Indeed, just the opposite
is true, namely, that doubt on the issue of likelihood of
confusion is resolved in favor of the senior user, in
this case, opposer. In re Martin’s Famous Pastry Shoppe,
Inc.,
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Opp. No. 118,149

748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Decision: The opposition is sustained.

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