Apacer Technology, Inc.

Trademark Trial and Appeal Board

Jan 4, 2001

No. 75375082 (T.T.A.B. Jan. 4, 2001)

1/4/01 Paper No. 17
RLS/CV
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Apacer Technology, Inc.
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Serial No. 75/375,082
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E. Lynn Perry of Townsend and Townsend for Apacer
Technology, Inc.
Howard Smiga, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______
Before Simms, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Apacer Technology, Inc. (applicant), a Taiwanese
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark APACER
for the following goods:
Computer hardware, namely, computer
memories, RAM (random access memory),
transistors, integrated circuits,
semiconductors, microcircuits, silicon
transistor devices, electronic
circuits, semiconductor chips,
semiconductor devices, VLSI (very large
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/375,082
2
scale integrated circuit),
microprocessor chips, circuit boards,
add-on boards, interface cards, PCMCIA
(Personal Computer Memory Card
International Association) cards,
printed circuit boards, and computer
peripherals; blank compact discs,
tapes, and drives, and blank CD-ROMs,
in International Class 9.1
The Examining Attorney has refused registration under
Section 2(d) of the Act, 15 USC §1052(d), on the basis of
Registration No. 619,843, issued January 24, 1956 (twice
renewed) for the mark PACER for electrical capacitors. The
Examining Attorney and applicant have filed briefs but no
oral hearing was requested.
In arguing that confusion is likely as a result of use
of these marks, the Examining Attorney argues that there is
only a slight difference in pronunciation of the two marks.
Indeed, the Examining Attorney argues that the marks are
phonetic equivalents. Further, the Examining Attorney
maintains that it is likely that consumers will view
applicant's mark as "a PACER." Concerning the goods, the
Examining Attorney argues that registrant's "electrical
capacitors" must be construed broadly to include all types
of capacitors including those which may be used in
applicant's computer hardware products. The Examining
1 Application Serial No. 75/375,082, filed October 17, 1997,
claiming use and use in commerce since July 29, 1997.
Serial No. 75/375,082
3
Attorney contends that registrant's capacitors could be
components of applicant's RAM (random access memory). In
support of this proposition, the Examining Attorney has
made of record a 1998 Electronic Engineers Master Catalogue
showing that capacitors can be used in computer circuits,
integrated circuits, transistors, printed circuit boards,
etc.2 It is the Examining Attorney's position that
purchasers of capacitors are likely to include
manufacturers of computer hardware, including RAM. The
Examining Attorney maintains that the respective goods,
therefore, may travel in the same channels of trade to the
same class of potential purchasers. Finally, the Examining
Attorney contends that even sophisticated or knowledgeable
purchasers are not immune to confusion.
Applicant, on the other hand, argues that confusion is
unlikely because of the differences in sound, appearance
and meaning of the marks, differences in the goods and the
sophistication of potential purchasers. With respect to
the marks, applicant argues that registrant's mark PACER
suggests that registrant's capacitors are used to "pace"
2 The Examining Attorney also relies upon the definition of
"capacitor" from The Computer Glossary (7th ed.):
an electronic component that holds a charge.
It comes in varying sizes for use in power
supplies to the tiny cells in dynamic RAM
chips.
Serial No. 75/375,082
4
the flow of electric current. Applicant's mark, according
to applicant's attorney, is unlike registrant's mark
because it is not a real word. Moreover, applicant's mark
suggests that consumers are keeping "apace" of computer
technological developments. If anything, consumers will
see applicant's mark as a variation of the word "apace."
With respect to the goods, prospective purchasers and
channels of trade, applicant contrasts registrant's
electrical circuit product with its computer-related goods
designed to enhance computer memory.
Electrical capacitors and computer
memory hardware are not interchangeable
for the functions they perform, nor are
they sufficiently related to create a
likelihood of confusion. Electrical
capacitors are likely to be used by
electricians and by manufacturers of
electronic products. In contrast, the
computer hardware to enhance memory
sold by applicant is generally
purchased by companies assembling
computers comprised of hardware and
software from different manufacturers.
Due to the differences in the customers
at which they are aimed, Applicant's
goods and Registrant's goods travel in
different channels of trade. The
context in which these marks will be
seen, and the goods on which they are
used, are so different that it is
extremely unlikely that a consumer
would believe that they originated from
the same source. The likely-to-
continue trade channels do not
converge, which negates the likelihood
that consumers will be confused.
Serial No. 75/375,082
5
Applicant's brief, p.7. Expounding on the differences in
purchasers, applicant argues, brief, p.8:
The relevant purchasers of Applicant's
and the cited goods are clearly
distinguishable. Applicant's goods are
purchased by specialized buyers for the
companies assembling computers. These
buyers are not likely to purchase
electrical capacitors separately to
produce RAM themselves, since RAM is
only produced by professional RAM
manufacturers. The RAM purchased by
Applicant's customers would already
contain all of its components,
including any electrical capacitor, and
would be sold under Applicant's (or
another RAM manufacturer's) marks.
Applicant's customer simply would not
have an opportunity to be "confused"
about the mark used for a component of
RAM.
Finally, applicant argues that computer manufacturers
are usually sophisticated professionals who use a higher
level of care in purchasing hardware components and are,
therefore, not likely to be confused.
Upon careful consideration of this record and the
arguments, we conclude that confusion is not likely.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood-of-
confusion issue. In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). Two key
considerations in this case are the similarities of the
Serial No. 75/375,082
6
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 possible differences in the channels
of trade and the sophistication of the potential purchasers
are also important factors in this case.
With respect to the marks, there are, of course, some
differences--PACER vs. APACER. The registered mark is an
actual word whereas applicant’s mark is coined. The
registered mark has clear significance, whereas the meaning
of applicant’s mark is more nebulous. Also, applicant’s
mark begins with an “A”, which is of some significance in
making a commercial impression. The marks, therefore, have
some differences.
While the goods are not identical, there is some
evidence that capacitors, circuit boards and integrated
circuits could all be produced by the same entity. In this
regard, the Examining Attorney has introduced limited
evidence showing that the same company offers for sale some
or all of these products.
However, we believe that there is insufficient
evidence that these goods will be sold to the same class of
purchasers. While the Examining Attorney argues that the
respective goods travel in the same channels of trade to
the same class of potential purchasers, it seems to us that
Serial No. 75/375,082
7
applicant's position is, on the whole, more persuasive.
That is to say, purchasers who buy registrant's electrical
capacitors--perhaps electricians and manufacturers of other
electronic components--are not likely to be the same
purchasers who buy computer hardware products, such as
manufacturers who assemble computers from parts already
assembled. If this is the case, and the Examining Attorney
has not introduced any evidence to the contrary, it would
appear that purchasers of applicant's computer hardware
products are not likely to be exposed to registrant's mark
and goods.
Moreover, even if it were the case that one
manufacturer would buy both registrant's electrical
capacitors and applicant's computer hardware products, this
fact alone does not necessarily establish relatedness or
demonstrate that confusion is likely. See, for example,
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992)
and Electronic Data Systems Corp. v. EDSA Micro Corp., 23
USPQ2d 1460 (TTAB 1992). More importantly, however,
registrant's electrical capacitors and applicant's specific
computer hardware products are likely to be purchased,
typically in bulk, by relatively careful, sophisticated
purchasers, such as manufacturers. The relative
Serial No. 75/375,082
8
sophistication of those purchasers would tend to avoid any
likely confusion.
Because these goods are likely to travel in different
channels of trade to different classes of purchasers, and,
in any event, are likely to be purchased by sophisticated
purchasers, and in view of the differences in the marks, we
believe that confusion is unlikely, at least on this
record.
Decision: The refusal of registration is reversed.