Alpine Computer Systems, Inc.

Trademark Trial and Appeal Board

Feb 22, 2001

No. 74619936 (T.T.A.B. Feb. 22, 2001)

2/22/01
Paper No. 16
AFD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Alpine Computer Systems, Inc.
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Serial No. 74/619,936
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Anthony R. Masiello of Gadsby Hannah LLP for Alpine
Computer Systems, Inc.
David H. Stine, Trademark Examining Attorney, Law Office
114 (Margaret Le, Managing Attorney).
_______
Before Hohein, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On January 10, 1995, Alpine Computer Systems, Inc.
(applicant) filed an intent-to-use application to register
the mark ALPINE NETWORK INSURANCE for services identified
as “installation, maintenance and repair services for
computer and data transmission systems” in International
Class 37.1 Applicant subsequently disclaimed the term
1 Serial No. 74/619,936. On January 4, 1996, applicant’s
Amendment to Allege Use was approved.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 74/619,936
2
“Network.” The Examining Attorney refused to register the
mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of Registration No. 2,055,630 for the
mark ALPINE for:
computer keyboard terminals; floppy disk drives;
mobile computers; office computers; personal
computers; computer programs used to create and
develop computer software, and used to support
creating and developing micro-computers, recorded on
cards, tapes, and disks; modems; computer and
facsimile interfaces; and mobile facsimile machines
and parts thereof (International Class 9).2
After the Examining Attorney made the refusal final,
this appeal followed. Both applicant and the Examining
Attorney filed briefs. An oral hearing was not requested.
After considering the arguments of the applicant and
the Examining Attorney, the Examining Attorney’s refusal to
register applicant’s mark because it is likely to cause
confusion with registrant’s mark is affirmed.
Determining whether there is a likelihood of confusion
requires application of the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (CCPA 1973). The du Pont factors discussed
in this case include the similarity of the marks, the
similarity of the goods and services, the sophistication of
the purchasers, and the channels of trade. Not all of the
2 Registration No. 2,055,630 issued on April 22, 1997.
Ser No. 74/619,936
3
du Pont factors are applicable in every case. In re Dixie
Restaurants, 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533
(Fed. Cir. 1997).
The first factor we have considered is whether the
marks are similar in sound, appearance, meaning or
commercial impression. du Pont, 476 F.2d at 1361, 177 USPQ
at 567. Applicant seeks to register the typed mark ALPINE
NETWORK INSURANCE. The cited registration is for the word
ALPINE also in typed form. Applicant has incorporated
registrant’s entire mark into its mark and simply added the
highly suggestive or descriptive words NETWORK INSURANCE.
A likelihood of confusion is often found when an applicant
incorporates a registrant’s entire mark and it becomes the
dominant part of the applicant’s mark. See, e.g., Dixie
Restaurants, 105 F.3d at 1407, 41 USPQ2d at 1533-34 (DELTA,
the dominant portion of applicant’s THE DELTA CAFE and
design mark, held similar in sound, appearance, and meaning
to registrant’s DELTA mark); In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988) (BIGG’S and design for grocery and general
merchandise store services found likely to be confused with
BIGGS and different design for furniture); Wella Corp. v.
California Concept Corp., 558 F.2d 1019, 1022, 194 USPQ
419, 422 (CCPA 1977)(CALIFORNIA CONCEPT and design held
Ser No. 74/619,936
4
likely to be confused with CONCEPT for hair care products).
Here, the term ALPINE is the dominant term. It appears to
be an arbitrary term when applied to computer hardware,
software, and services.
Applicant argues that INSURANCE is an unusual and
striking feature of its mark. (Applicant’s appeal brief at
2.) Even it that were true, it does not help in avoiding a
likelihood of confusion when the marks ALPINE and ALPINE
NETWORK INSURANCE are used on closely related computer
products and services. The addition of the phrase “network
insurance,” including the admittedly descriptive term
“network,” to applicant’s mark for computer services serves
does not eliminate the likelihood of confusion. The phrase
“network insurance” hardly seems as unusual and incongruous
as applicant argues. Applicant’s own specimens use the
words quite mundanely. “The Alpine Network Insurance line
of service products is designed to provide comprehensive
network insurance and general health and performance
coverage, as well as emergency and disaster recovery
services.” (Specimens, p. 1; emphasis added). Applicant’s
use of the highly suggestive or descriptive words “network
insurance” and health industry terminology is hardly
incongruous. In effect, applicant insures that a client’s
computer network will function smoothly and be serviced
Ser No. 74/619,936
5
quickly. It is not sufficient to overcome the Examining
Attorney’s determination that ALPINE is the dominant part
of applicant’s mark.
Next, applicant argues that its services and
registrant’s goods would not be viewed as having a common
source. Obviously, applicant’s services and registrant’s
goods are not identical but it is difficult to imagine more
closely related goods and services. Some of registrant’s
goods include office, personal, and mobile computers and
computer programs used to develop computer software, and
used to develop microcomputers. Applicant’s services
involve installing, maintaining and repairing computer and
data transmission systems.
To determine whether the goods and services are
related, we must look to the identification of goods and
services in the application and registration. Dixie
Restaurants, 41 USPQ2d at 1534; Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). “[I]t is well established
that a “relatedness” which speaks to a likelihood of
confusion may occur not only where goods are involved but
can exist between products on one hand and services dealing
with or related to those products on the other hand.” MSI
Data Corp. v. Microprocessor Systems, Inc., 220 USPQ 655,
Ser No. 74/619,936
6
658 (TTAB 1983) (Computer hardware manufacturing services
to the order of or specification of others held related to
electronic ordering system for gathering and transmitting
data comprising a recorder-transmitter and data receiver).
Safety-Kleen Corp. v. Dresser Industries, 518 F.2d 1399,
186 USPQ 476 (CCPA 1975) (Maintenance services found
related to parts for cleaning units). Relatedness may
exist even if the products and services are not competitive
“if they could come to the attention of the same types of
customers suggesting a common origin.” MSI Data, 220 USPQ
at 658. Here, confusion would be almost unavoidable when
an employee, tasked with obtaining maintenance, repair, or
installation services for a business’s ALPINE office
computers, encounters the mark ALPINE NETWORK INSURANCE for
maintaining, repairing, and installing computer systems.
Even sophisticated purchasers would likely be confused
under these circumstances. Octocom Systems Inc. v. Houston
Computer Services, 918 F.2d 937, 942, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990).
Applicant cites Reynolds and Reynolds Co. v. I.E.
Systems, Inc., 5 USPQ2d 1749 (TTAB 1987), for the
unremarkable proposition that there must be “some
similarity between the goods and services at issue beyond
the mere fact that each involves the use of computers.”
Ser No. 74/619,936
7
Id. at 3. In that case, the very specific and different
software of the applicant and the opposer were not so
closely related that confusion was likely. In this case,
employees responsible for information technology purchases
at companies would be expected to purchase applicant’s
services and registrant’s products. In those instances,
confusion would be likely if goods and services are
provided under the same or substantially similar marks.
While likelihood of confusion is determined on the
basis of the goods and services as set forth in the
application and registration, applicant argues that its
services are marketed to people who are in the process of
building computer systems. Registrant’s goods, however,
include some of the products that would be necessary to
develop a computer system such as office computers.
Applicant argues that “[a]n individual consumer who
buys a computer does not engage a service provider to
install and maintain the computer in his home.” Assuming
that this unsupported argument is correct, it completely
ignores the fact that the cited registration is in no way
limited to computer products purchased by individuals for
home use. Quite the opposite, office computers are
specifically recited as well as computer programs used to
develop computer software, and to develop microcomputers.
Ser No. 74/619,936
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This is hardly the type of software normally considered
designed for home use. The other goods in the
registration, e.g., personal computers, mobile computers,
modems, etc., do not support an argument that these goods
and applicant’s services would not be encountered by the
same purchasers.
Decision: The refusal to register is affirmed.