Athena Archiver, Inc.

Trademark Trial and Appeal Board

Dec 21, 2007

No. 78689801 (T.T.A.B. Dec. 21, 2007)

Mailed:
December 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Athena Archiver, Inc.
________

Serial No. 78689801
_______

Thomas I. Rozsa of Rozsa Law Group, LLC for Athena
Archiver, Inc.

Dezmona J. Mizelle-Howard, Trademark Examining Attorney,
Law Office 110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Seeherman, Holtzman and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On August 10, 2005, Athena Archiver, Inc. filed a use-
based application for the mark ATHENA ARCHIVER, in standard
character form, for computer software ultimately identified
as “downloadable computer software, namely, software for
archiving electronic data,” in Class 9 (Serial No.
78689801). Applicant disclaimed the exclusive right to use
the word “archiver.”
The Examining Attorney finally refused registration
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), because applicant’s mark, when used in connection
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78689801
2
with software for archiving electronic data, so resembles
the mark ATHENA for “computer programs, and instructional
manuals sold therewith, which collectively provide a set of
integrated network services; namely, user authentication,
file service, messaging service, mail service, network
management service, and printer service” as to be likely to
cause confusion.1 The Examining Attorney contends that
applicant’s mark is likely to cause confusion with the
registered mark for the following reasons:
1. The marks ATHENA ARCHIVER and ATHENA are
identical except for the addition of the
descriptive word “archiver” in applicant’s mark;
2. ATHENA is an arbitrary term when used in
connection with computer software, and therefore
the registered mark is a strong mark entitled to
a broad scope of protection; and,
3. The computer software of the applicant and the
registrant are related because the registrant’s
software network could include software for
archiving electronic data.

1 Registration No. 1789164, issued August 24, 1993; Sections 8
and 15 affidavits accepted and acknowledged; first renewal.
Serial No. 78689801
3
On the other hand, applicant contends that the marks
will not cause a likelihood of confusion for the following
reasons:
1. The name “Athena” has been registered numerous
times in connection with software products, and
therefore the name “Athena” is weak and entitled
to only a narrow scope of protection;2
2. The marks, ATHENA and ATHENA ARCHIVER, when
considered in their entireties, are not similar
because “Athena” is descriptive.3 Applicant makes
the following argument:
The Appellant’s mark and the cited mark
have the element “ATHENA” in common.
However, this commonality of elements
is not sufficient to create likelihood
of confusion. This is because both
portions of the mark are fairly
descriptive. There is no one

2 Applicant attached to its brief a printout of a trademark
search for the mark ATHENA, in Class 9, performed in the LEXIS
database. The Examining Attorney did not object to this evidence
as being untimely pursuant to Trademark Rule 2.142(d), 37 CFR
§21.24(d), nor did she object on the ground that the submission
of a search report from a commercial database is not proper
evidence of third-party registrations. To make registrations of
record, soft copies of the registrations, or the electronic
equivalent thereof taken from the electronic records of the U.S.
Patent and Trademark Office, must be submitted. In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 n.3(TTAB 1994); In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983). Rather, in her
brief, the Examining Attorney discussed the registrations
introduced by applicant. Because the Examining Attorney treated
this material to be of record, we will consider the registrations
for whatever probative value they may have.
3 While we have not recounted each and every one of applicant’s
arguments in this opinion, we have carefully considered them in
reaching our decision.
Serial No. 78689801
4
individual that has an exclusivity to
the word “ATHENA”. . . .

* * *

Accordingly, while the mark “ATHENA
ARCHIVER” must be considered in its
entirety, the descriptive portions
(sic) “ATHENA” are (sic) given less
weight than the combination of the word
“ATHENA ARCHIVER” which gives a totally
different pronunciation and visual
impression to the Appellant’s mark as
distinguished from the prior cited
registration.4

3. The computer software described in the
application and the cited registration are not
similar for the following reason:
[n]o one would confuse a product which
is a computer program and instruction
manual sold therewith, which
collectively provide a set of
integrated network services; namely,
user authentication, file service, name
service, messaging service, mail
service, network management service and
print service with downloadable
computer software, namely software for
archiving electronic data. Clearly,
the products are totally different
products, sold in totally different
channels of trade to consumers who are
buying the products for totally
different purposes.5

4 Applicant’s Brief, pp. 5 and 7. Applicant’s assertion that the
registered mark is merely descriptive may not be considered
because it is an impermissible attack on the validity of the
cited registration. In re Peebles Inc., 23 UPSQ2d 1795, 1797 n.5
(TTAB 1992).
5 Applicant’s Brief, p. 14. Neither applicant, nor the Examining
Attorney, introduced any evidence regarding the nature of the
software at issue, the channels of trade, the classes of
Serial No. 78689801
5
Likelihood of Confusion
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 issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003).
A. The strength of the mark ATHENA.6

First, we analyze the strength of the mark ATHENA
because our finding will effect the scope of protection or
exclusivity of use that we accord the cited registration in
determining whether applicant’s mark is likely to cause
confusion. Applicant supports its argument that ATHENA is
a weak mark by submitting a search report featuring the
following registrations incorporating the name “Athena”:7

consumers who purchase the software, or the degree of care
exercised by such consumers.
6 While the “strength” of the cited registration is not
specifically listed as a du Pont factor, it falls within the
penumbra of the “fame” factor because fame for purposes of
likelihood of confusion “varies along a spectrum from very strong
to very weak.” Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170
(TTAB 2001).
7 The only probative value of third-party applications is to show
that the applications were filed.
Serial No. 78689801
6

MARK REG. NO. GOODS

ATHENA 3079220 Electronic equipment in the nature
of inertial navigation systems,
global positioning systems, and
autopilot systems all consisting
of computers, computer software,
transmitters, receivers, and
network interface devices and
integrated sensor suites, all for
use in the field of aviation

ATHENA 3073751 Instruments and apparatus,
including software, in the field
microlithography

ATHENA SWORD 2867619 Software and electronic games

ATHENA 3104590 Software to assess the
environmental implications, energy
use and energy requirements
related to air emissions of
building materials, buildings and
construction which may be
connected to databases and other
information sources

ATHENA TOWER 2770992 Computer workstations, comprising
tables and shelves

ATHENA 2570223 Flight control electronics for
manned and unmanned aircraft

ATHENA 1815754 Real time computer graphics
software

TEL-ATHENA 1617351 Computer software in the fields of
telemarketing and market research
interviewing

Generally, third-party registrations, in and of
themselves, cannot justify the registration of another mark
that is so similar to a previously registered mark as to
Serial No. 78689801
7
cause a likelihood of confusion. Third-party registrations
are not evidence of what happens in the market place or
that consumers are familiar with the marks. To the extent
that such third-party registrations have any probative
value in the likelihood of confusion analysis, they are
relevant to show that the mark, or a portion of a mark, is
descriptive, suggestive, or so commonly registered that the
public will look to other elements to distinguish the
source of the products identified in the registrations.
AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
177 USPQ 268, 269-270 (CCPA 1973); Specialty Brands, Inc.
v. Coffee Bean Distributors, Inc. 748 F.2d 669, 223 USPQ
1281, 1285 (Fed. Cir. 1984). Thus, third-party
registrations may be used like dictionaries to demonstrate
that the mark conveys a specific meaning. Tektronix, Inc.
v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-695
(CCPA 1976); In re Melville Corp., 18 USPQ2d 1386, 1388
(TTAB 1991); Plus Products v. Star-Kist Foods, Inc., 220
USPQ 541, 544 (TTAB 1983).
While applicant contends that the registrations prove
that ATHENA is descriptive, as we have previously stated,
such a position represents an impermissible attack on the
Serial No. 78689801
8
validity of the cited registration.8 Moreover, the third-
party registrations do not show that the name “Athena” is
suggestive of computer software. Applicant does not
explain how “Athena” is suggestive. There is no analysis
of what qualities, characteristics, features, or functions
of the software that “Athena” suggests. The eight (8)
third-party registrations of record are for a wide range of
computer programs in disparate fields (i.e., software in
the fields of navigation systems, microlithography,
electronic games, environmental emissions from buildings,
graphics software, and telemarketing). The disparate
nature of the goods in the third-party registrations do not
shed any light on what common significance ATHENA might
have for these different goods, or for the registrant’s
identified goods. Accordingly, we do not believe that the
registered mark has been shown to be weak. Moreover, even
if we were tp deem the protection to be accorded the cited
registered mark as being more limited than that for an
undiluted mark, the protection still extends to prevent the
registration of a mark that conveys the same commercial
impression and that is used for related goods. Likelihood
of confusion “is to be avoided, as much between ‘weak’
marks as between ‘strong’ marks.” King Candy Co. v. Eunice

8 Footnote 4 supra.
Serial No. 78689801
9
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109
(CCPA 1974).
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Co., supra. In a particular case, any one of these means
of comparison may be critical in finding the marks to be
similar. In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB
1988). See also, In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988). In comparing the marks, we are mindful
that the test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of
their overall commercial impression so that confusion as to
the source of the goods offered under the respective marks
is likely to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086
(Fed. Cir. June 5, 1992). The proper focus is on the
recollection of the average customer, who retains a general
Serial No. 78689801
10
rather than specific impression of the marks. Winnebago
Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335,
344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).
The name “Athena” is the dominant portion of
applicant’s mark because the word “archiver” is
descriptive when it is used in connection with software for
archiving electronic data. “Archiver” describes the
purpose or function of applicant’s software (i.e., it
archives). Moreover, applicant disclaimed the exclusive
right to use the word “archiver” in response to the
Examining Attorney’s finding that it is merely descriptive,
thereby conceding the descriptive nature of the word
“archiver” as applied to software for archiving electronic
data. In re DNI Holdings Ltd., 77 USPQ2d 1435, 1442 (TTAB
2005). See also Quaker State Oil Refining Corp. v. Quaker
Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972).
Therefore, the name “Athena” is accorded more weight than
the word “archiver” in our comparison of the marks. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
The significance of the name “Athena” as the dominant
element of applicant’s mark is further reinforced by its
location as the first word of the mark. Presto Products
Serial No. 78689801
11
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
1988)(“it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and
remembered”). See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005)(“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in
the mark and the first word to appear on the label);
Century 21 Real Estate Corp. v. Century Life of America,
supra (upon encountering the marks, consumers must first
notice the identical lead word).
In comparing the two marks, we note that the
applicant’s mark contains the registrant’s entire mark
(i.e., ATHENA). Likelihood of confusion is often found
where the entirety of one mark is incorporated within
another. In re Denisi, 225 USPQ 624, 626 (TTAB 1985) (“the
fact that [applicant’s] mark herein [PERRY’S PIZZA]
incorporates the descriptive term ‘pizza’ as part of the
mark presented for registration does not obviate the
likelihood of confusion with the mark of the cited
registration [PERRY’S]”); Johnson Publishing Co. v.
International Development Ltd., 221 USPQ 155, 156 (TTAB
1982)(EBONY for cosmetics and EBONY DRUM for hairdressing
and conditioner); In re South Bend Toy Manufacturing
Serial No. 78689801
12
Company, Inc., 218 USPQ 479, 480 (TTAB 1983)(LIL’ LADY
BUGGY for toy doll carriages is likely to cause confusion
with LITTLE LADY for doll clothing because “the word
‘buggy’ is clearly descriptive of applicant’s doll carriage
products” and “would fail to alter the perceived identity
of the dominant and more arbitrary ‘LITTLE LADY’ and ‘LIL’
LADY’ elements of these marks”).
We are not persuaded that the addition of the word
“archiver” to applicant’s mark is sufficiently distinctive
to differentiate applicant’s mark from the registered mark
in any meaningful way. In fact, the addition of the word
“archiver” in applicant’s mark may increase the likelihood
of confusion because customers and potential customers may
mistakenly believe that applicant’s software is an
expansion of the registrant’s “integrated network services”
and that both products emanate from the same source.
In view of the arbitrary nature of the registered mark
ATHENA, the lesser weight to be accorded the descriptive
word “archiver” in applicant’s mark, and applicant’s
incorporation of the entire registered mark in its mark, we
find that the similarities between the marks far outweigh
the differences. Considering the similarities between the
marks, a purchaser who sees one mark and later encounters
the other on related software is likely to view the marks
Serial No. 78689801
13
as variations of each other, representing a single source.
Accordingly, we conclude that the marks ATHENA and ATHENA
ARCHIVER are similar in appearance, sound, meaning, and
commercial impression.
C. The similarity or dissimilarity and nature of the
goods.

In an ex parte appeal, likelihood of confusion is
determined on the basis of the goods as they are identified
in the application and the cited registration. Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981); In re William Hodges & Co., Inc., 190 USPQ
47, 48 (TTAB 1976). Moreover, the greater the degree of
similarity between the applicant’s mark and the mark in the
cited registration, the lesser the degree of similarity
between the goods in the application and the cited
registration that is required to support a finding of
likelihood of confusion. In re Opus One, Inc., 60 USPQ2d
1812, 1815 (TTAB 2001); In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
It is well settled that the goods of the applicant and
the registrant do not have to be identical or directly
competitive to support a finding that there is a likelihood
of confusion. It is sufficient if the respective goods are
Serial No. 78689801
14
related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that
could, because of the similarity of the marks used in
connection therewith, give rise to the mistaken belief that
they emanate from or are associated with a single source.
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
The goods in the cited registration are “computer
programs . . . which collectively provide a set of
integrated network services; namely, user authentication,
file service, messaging service, mail service, network
management service, and printer service.” The word
“integrated” has the following meanings (emphasis in the
original):
1. combining or coordinating separate
elements so as to provide a
harmonious, interrelated whole:
an integrated plot; an integrated
course of study.

2. Organized or structured so that
the constituent units function
cooperatively; an integrated
economy.9

9 Dictionary.com Unabridged (v 1.1) based on the Random House
Unabridged Dictionary (2006). See also The Computer Glossary, p.
199 (7th ed. 1995) (“a collection of distinct elements or
components that have been built into one unit”). In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n. 3(TTAB 2002).
Serial No. 78689801
15
“Integrated network services” would, therefore, be a
network that combines several applications (e.g., user
authentication, file service, messaging service, mail
service, network management service, and printer service)
into a single unit. Applicant’s software for archiving
electronic data is a type of application that could
potentially be integrated into registrant’s network of
computer programs. In other words, the mail received and
sent through the “mail service” as part of the registrant’s
“integrated network service” is something that would be
archived (e.g., archiving email messages). Thus, the
software of the applicant and registrant are complementary,
and could be marketed under circumstances giving rise to
the mistaken belief, because of the similarity of the
marks, that they emanate from the same source.
In view of the foregoing, we find that the similarity
and nature of the goods favors a finding that there is a
likelihood of confusion.

See also, University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Serial No. 78689801
16
D. The similarity or dissimilarity of established,
likely-to-continue trade channels.

As noted in footnote 5 supra, neither the Examining
Attorney, nor the applicant, submitted any evidence
regarding channels of trade or classes of consumers.
However, as we discussed in the previous section,
applicant’s software and registrant’s software are
complementary products, and therefore can be marketed to
the same classes of customers. For example, consumers
using registrant’s software might buy/obtain a license for
applicant’s archiving software as an accessory to the “mail
service.” Because the classes of consumers are the same,
this du Pont factor favors a finding of likelihood of
confusion.
E. Balancing the factors.
The du Pont factors require to us to consider the
thirteen factors for which evidence has been made of
record. The Court of Customs and Patent Appeals, the
predecessor to our reviewing court, has observed that
“[t]he fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). Because of the
Serial No. 78689801
17
similarity of the marks ATHENA and ATHENA ARCHIVER, the
similarity of the software identified by each mark, and the
absence of any evidence that militates against confusion,10
we conclude that there is a likelihood of confusion. To
the extent that any doubt might exist as to the correctness
of this decision, we resolve such doubt against the
applicant. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837
F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1998).
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.

10 As previously discussed, the third-party registrations do not
persuade us that ATHENA is a weak mark for the registrant’s
identified software.