Analytica Environ-mental Labora-tories, Inc.v.Lumina Decision Systems, Inc.

Trademark Trial and Appeal Board

Jan 26, 2001

No. 92026851 (T.T.A.B. Jan. 26, 2001)

1/26/01
Paper No. 17
GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Analytica Environmental Laboratories, Inc.
v.
Lumina Decision Systems, Inc.
_____
Cancellation No. 26,851
_____
Harold R. Bruno, III of Smith McCullough, P.C. for Analytica
Environmental Laboratories, Inc.
Robert H. Sloss of General Counsel Associates LLP for Lumina
Decision Systems, Inc.
_____
Before Hanak, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
Analytica Environmental Laboratories, Inc.
("petitioner") has petitioned to cancel the registration
owned by Lumina Decision Systems, Inc. ("respondent") for
the mark ANALYTICA for goods identified as "computer
software for decision analysis applications in the
environmental, pharmaceutical, aerospace, power plant,
financial, telecommunications, health care, computer,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 26,851
2
manufacturing and retail fields and user manuals sold
together as a unit therewith."1
In pertinent part, petitioner asserts in its pleading
that it "has adopted and continuously used the trademark
ANALYTICA and design, since at least as early as November
30, 1987 to the present, in connection with environmental
testing and analysis laboratory services"; that it has
obtained Registration No. 1,665,304 for the mark, for those
services; that there is no issue as to priority of use
because respondent filed its intent-to-use application in
April 1995 and in its subsequently filed statement of use
claimed September 9, 1996 as respondent's date of first use;
that consumers are likely to consider respondent's goods as
emanating from petitioner; and that there is a likelihood of
consumer confusion or deception, as evidenced by an instance
of actual confusion. Petitioner attached to its petition a
plain copy of its registration, showing the mark set forth
below.
1 Registration no. 2,044,684, issued March 11, 1997, in
international class 9, and listing a date of first use and first
use in commerce of September 9, 1996.
Cancellation No. 26,851
3
In its answer, respondent admitted petitioner's
allegations relative to respondent's first use of
respondent's mark ANALYTICA, but otherwise denied the
allegations of the petition. In addition, in separate
averments, respondent asserted that the petition is barred
by laches and that petitioner is estopped to petition for
cancellation of respondent's mark.2
The record includes the pleadings; the file of the
challenged registration; a certified copy of petitioner's
pleaded registration, introduced by petitioner's notice of
reliance, showing that it is subsisting and owned by
petitioner; the testimony and associated exhibits from the
testimony deposition of Jeffrey Lyons, president of
petitioner; the testimony and associated exhibits from the
testimony deposition of Eric Weissman, president and CEO of
Decisioneering, Inc., a former licensee of respondent; and
the testimony and associated exhibits from the testimony
deposition of Max Henrion, CEO of respondent.3
2 We view the allegation of estoppel solely as part of
respondent's affirmative defense of laches.
3 Respondent filed a notice of reliance on its involved
registration file, which was unnecessary. This notice, as well
as petitioner's notice of reliance, asserts that each party will
rely on the testimony of the various witnesses. Again, it is
unnecessary to file a notice of reliance on a testimony
deposition transcript. The transcript of every testimony
deposition taken in a Board case must be filed with the Board
and, when filed, automatically constitutes part of the
evidentiary record and may be cited to by any party. See
discussion and authorities collected in TBMP §713.12.
Cancellation No. 26,851
4
As a preliminary matter, we consider respondent's
assertion that petitioner has abandoned the mark in its
pleaded registration. During cross-examination of Mr.
Lyons, respondent's counsel pursued the question of the
precise mark that is covered by petitioner's registration:
Q. Is there a registration for a trademark for
Analytica Environmental Laboratories,
Incorporated?
A. Yes.
Q. Is that any different than the mark that's
depicted in Exhibit 14 [petitioner's pleaded
registration]?
A. It currently is because we have submitted the
documentation to the trademark office, which I
understand has been accepted, with the current
logo and the name of Analytica.4
Lyons' Deposition, 32:19 to 33:2.
Respondent argues in its brief that the mark in
petitioner's pleaded registration has not been used since
April 1995, when petitioner changed its name.
Notwithstanding the evidence of record which could be
characterized as supporting respondent's assertion that
petitioner has abandoned its registered mark5, we note that
Also, while petitioner's notice of reliance asserts that
petitioner will rely on the transcript of a discovery deposition
of respondent's CEO, Mr. Henrion, no such deposition appears to
have been taken. In any event, if a discovery deposition was
taken, its transcript was not submitted with petitioner's notice
of reliance and is not, therefore, part of the record.
4 While Mr. Lyons apparently believes that the mark in
petitioner's registration has been changed in Patent and
Trademark Office records, the certified copy of its registration
clearly reveals the contrary.
5 See, in addition to testimony quoted above, Lyons' deposition
36:19 through 37:20.
Cancellation No. 26,851
5
respondent is precluded from pursuing a collateral attack on
petitioner's pleaded registration. Respondent did not
include a counterclaim for cancellation in its answer and
has not moved to amend the answer to assert such a
counterclaim. Moreover, we do not view the evidence of
abandonment as so clear and unmistakable that petitioner
should be unable to rely on the presumptions of validity,
ownership and exclusive right to use accorded to the owner
of a registration. Accordingly, we will not further
consider the assertion of abandonment. See Baroid Drilling
Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1050
n.4 (TTAB 1982); see also, Penguin Books Ltd. v. Eberhard,
48 USPQ2d 1280, 1286-87 (TTAB 1998). In view thereof, we
also need not consider petitioner's argument that it has not
abandoned its mark because the specimens of use submitted
with its Section 8 and 15 affidavit (Petitioner's exh. 18)
show a mark not substantially different from the mark
originally registered.6
We turn, next, to the record. Petitioner and its
related companies provide their customers with environmental
6 We note that both petitioner's pleading and its brief rely only
on the mark in the pleaded registration, not use of the word
ANALYTICA alone as an element of the trade name of petitioner and
the related "Analytica Group" companies, or on any mark revealed
in exhibit 18. Thus, in our analysis of likelihood of confusion
we have limited our comparison of the marks to petitioner's and
respondent's respective registered marks. We have given no
weight to evidence relating to other uses of the term ANALYTICA,
or marks incorporating that term, by petitioner or "Analytica
Group" companies other than petitioner.
Cancellation No. 26,851
6
testing and analysis laboratory services. Each of the
related companies specializes in testing and analyzing
samples, such as water, air, soil, or building materials,
for particular substances. Lyons' Dep. 7:24-9:8 and 12:9-
12:16. The results, including both raw data and
conclusions, are reported to customers in hard copy reports
and in electronic form, such as by e-mail via the Internet
or by diskette. Customers can utilize the electronic form
results to manipulate and use the data and reports in
assessing environmental risks. Id. 11:5-11:15, 52:4-52:25.
Petitioner's customers include "a wide array of
companies or individuals. It can be city, state, local
municipalities, federal government agencies, state
government agencies, commercial and industrial businesses,
environmental consulting firms, environmental engineers,
petroleum engineers…, [and] universities [and] school
districts." Id. 19:14-19:24. The services cost from "a few
hundred dollars to several hundred thousand dollars." Id.
81:15-81:16. Petitioner promotes its services via its web
page on the Internet, in trade journals, at trade shows, by
telemarketing, and in brochures and flyers used for direct
mail. Id. 20:25-22:20.
Respondent is in the business of developing software
that aids the decision-making process. Henrion Dep. 8:2-
8:5. The particular program covered by respondent's
Cancellation No. 26,851
7
registration is used "for creating, analyzing and
communicating quantitative models. [It is] a high-end
spreadsheet [with] a more graphical visible interface [and]
allows quantities to be represented as uncertain using
probability distributions…." Id. 9:10-9:18; see also, id,
13:3-13:9 and Weissman Dep. 17:7-17:12. The vast majority
of the copies of respondent's program that have been sold,
approximately 1,000, have been sold by respondent's
licensee, with a retail price of nearly $800 per copy; since
marketing by the licensee ceased and respondent has been
marketing the program directly, it has been selling for
nearly $500 per copy. Henrion Dep. 73:8, 34:2-34:5;
Weissman Dep. 35:14.
The typical purchaser of respondent's program is more
sophisticated than the average purchaser of software.
Weissman Dep. 39:18-39:19. See also, id, 30:20-31:1, and
Henrion Dep. 31:23-32:10.7 The program has not been sold at
retail. Henrion Dep. 34:17-34:22. It has been marketed
through direct sales calls, direct mail, the Internet, and
at trade shows. Weissman Dep. 11:22-14:17; Henrion Dep.
34:13-34:16.
7 Q. …[A]s the principal developer of this product, did you have
an expectation that the user would have to have a certain level
of experience in a particular area?
A. Yes.
Q. What type of experience did you--
A. Typically, at least a graduate degree in a quantitative
discipline.
Henrion Dep. 32:3-32:10.
Cancellation No. 26,851
8
We begin our analysis of petitioner's claim by noting
that petitioner prevails on the issue of priority, because
petitioner has introduced a certified copy of its pleaded
registration, establishing that it is subsisting and owned
by petitioner, and respondent, in its answer, admitted that
it did not use its mark until a date long after the filing
date of the application which gave rise to petitioner's
registration. See Brewski Beer Co. v. Brewski Brothers
Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) and Hilson Research
Inc. v. Society for Human Resource Management, 27 USPQ2d
1423, 1428-29 n.13 (TTAB 1993).
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all the du Pont
factors which are relevant under the present circumstances
and for which there is evidence of record. In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). In any likelihood of confusion analysis,
however, two key considerations are the similarity or
dissimilarity of the goods or services and the similarity or
dissimilarity of the marks. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); In re Azteca Restaurant Enterprises Inc., 50 USPQ2d
1209, 1210 (TTAB 1999).
We consider, first, the similarity or dissimilarity of
the marks. Respondent argues that the marks are dissimilar
Cancellation No. 26,851
9
because petitioner's mark incorporates a stylized letter A
design, presents the term ANAYLYTICA with larger letters on
either end, and includes I-N-C-O-R-P-O-R-A-T-E-D. In terms
of the visual similarity of the marks, we agree that the use
of the stylized letter A and the particular display of
"incorporated" result in a mark that looks different than
respondent's mark. In contrast, we disagree with
respondent's contention that petitioner's particular display
of the term ANALYTICA, i.e., with the "A" on either end
slightly larger than the other letters, contributes to
visual dissimilarity. Respondent's mark ANALYTICA is
registered in typed form, so we must consider the
possibility of it being presented in various forms of
display, including the form in which petitioner displays
that term. Phillips Petroleum Co. v. C. J. Webb, Inc., 442
F.2d 1376, 170 USPQ 35 (CCPA 1971); Jockey International
Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992).
While we find the marks to have both similarities and
dissimilarities in appearance8, we find the connotation or
meaning created by the marks to be similar. Petitioner's
registration includes a disclaimer of the term
8 To the extent the parties' respective marks would be spoken,
there would be both similarities and dissimilarities in
pronunciation, with the latter attributable to petitioner's use
of the letter A and the term "incorporated" in its mark. We find
it unlikely, however, that many of petitioner's customers would
articulate the letter A and the term "incorporated" in
petitioner's mark, and would be more likely to speak it simply as
ANALYTICA.
Cancellation No. 26,851
10
"incorporated," and disclaimed matter typically is less
significant than other components in a mark. Tektronix,
Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA
1976). In addition, we find that the stylized letter A
design would be perceived as an initial and would tend to
reinforce the dominant term in petitioner's mark, i.e.,
ANALYTICA. In sum, we find the marks create the same basic
commercial impression.
Notwithstanding the basic identity of commercial
impression created by the involved marks, we agree with
respondent that the term ANALYTICA, though not found in the
dictionary, is highly suggestive of the involved goods and
services. The term is evocative of "analysis" and
"analytical," both of which are terms used by petitioner to
describe its services. Likewise, respondent's software is a
"decision analysis" program. Moreover, the record,
including non-party registrations, Internet evidence and
phone directory listings, reveals that ANALYTICA has
appealed to others as a trademark or trade name element, for
laboratories and laboratory equipment, and in the computer
field, among others. While this evidence does not establish
the extent of use of these other marks or names, or the
degree to which consumers have been exposed to them, it does
demonstrate that ANALYTICA may not be particularly
distinctive. See Bost Bakery Inc. v. Roland Industries,
Cancellation No. 26,851
11
Inc., 216 USPQ 799, 801 n.6 (TTAB 1982). In addition,
petitioner has provided no support for its claim that its
mark has achieved a degree of fame in the "niche" field of
environmental testing. Thus, we conclude that the scope of
protection to which petitioner's mark is entitled is
limited.
Turning to the involved goods and services, they
clearly are not competitive, notwithstanding petitioner's
arguments to the contrary9, and are only theoretically
complementary. Respondent's CEO admitted during cross-
examination that it would be possible for a user of
respondent's software to utilize data obtained from
petitioner's laboratory. Nonetheless, the witness also
testified that the composition of an environmental sample,
i.e., the results of the type of analysis conducted in
petitioner's laboratory, would "be one among, you know,
many, many inputs." Henrion Dep. 33:24-33:25. Moreover,
there is no evidence that any common customer of petitioner
and respondent has used the results of petitioner's analysis
services in a decision analysis assessment using
respondent's software.
9 Petitioner argues that "both companies provide tools by which
environmental data is analyzed" and "the end result" of its
services and use of respondent's program "are charts, bars and
graphs of environmental data." The argument suffers from
unwarranted generalities that do not accurately reflect the
respective goods and services.
Cancellation No. 26,851
12
The question of the relatedness of the goods and
services in this case is similar to the circumstances
considered by this Board in the Information Resources case.
In that case, no likelihood of confusion was found despite
simultaneous use of EXPRESS in connection with computer
software and services relating to the analysis of
information, including financial information, and X*PRESS
for transmitting news and a variety of general information
and data to home and business computers via satellite and
cable television lines. Information Resources Inc. v.
X*Press Information Services, 6 USPQ2d 1034 (TTAB 1988).
In regard to classes of consumers for the goods and
services, we note that the only evidence that the parties
even have common customers consists of testimony from
petitioner's president that petitioner has done business
with some of the same large companies and governmental
agencies that are listed as customers of respondent's former
licensee. There is no evidence, however, that the same
individuals, or even the same departments within these
institutional purchasers, would be responsible for
purchasing both petitioner's services and respondent's
goods. The mere fact that respondent's software and the end
products resulting from a purchase of petitioner's services
could end up in the hands of the same institutional consumer
do not dictate a finding of likelihood of confusion. See
Cancellation No. 26,851
13
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 21 USPQ2d 1388 (Fed. Cir. 1992); see also, SBS
Products Inc. v. Sterling Plastic & Rubber Products, Inc., 8
USPQ2d 1147, 1150 (TTAB 1988) (all products used in
industrial plants are not, per se, related). Moreover, it
is clear from the record that the particular individuals who
would seek petitioner's services or respondent's goods,
would be sophisticated and unlikely to rely solely on the
parties' marks in making their purchasing decisions.
We note petitioner's argument that the involved goods
and services have been marketed at some of the same trade
shows. Petitioner has not, however, presented evidence that
any attendees inquired about a possible relationship of the
parties. We find the evidence of promotion at common trade
shows no more probative on the question of likelihood of
confusion than the evidence that the goods and services are
also marketed through the common trade channel of the
Internet. That is to say, this evidence is not probative of
a likelihood of confusion. See SBS Products, supra, at 1150
(mere marketing of goods in same publications did not
warrant finding that products were related or that readers
would believe different goods originated in same source).
We note petitioner's allegation that there has been a
single instance of actual confusion. We agree, however,
with respondent's argument that the letter sent to
Cancellation No. 26,851
14
petitioner, but intended for respondent's licensee, was
misdirected through carelessness, not as the result of any
actual confusion. The letter-writer was seeking to sell
services, and was not seeking to purchase respondent's
software program. We agree with the characterization of the
letter by Mr. Weissmann, i.e., as a "junk mail"
solicitation. Weissmann Dep. 43:22-43:25.
Finally, we find unpersuasive petitioner's argument
that respondent adopted its mark in bad faith and with an
intent to trade on petitioner's reputation. The record does
not support the argument. Though respondent at some point
became aware of petitioner's registration, it was not until
after respondent had chosen its mark and concluded that the
parties could co-exist because they are not competitors.
In sum, despite the virtually identical impressions
created by the marks, we find no likelihood of confusion
because the marks are suggestive and entitled only to a
limited scope of protection; the goods are not competitive,
and only marginally complementary; there is no evidence that
the goods and services have common purchasers, even though
they may have been marketed to some of the same
institutional customers; and the prospective purchasers are
highly sophisticated.
Decision: The petition to cancel is dismissed.