Autodesk, Inc.

Trademark Trial and Appeal Board

Oct 5, 2000

No. 75379524 (T.T.A.B. Oct. 5, 2000)

10/5/00
Paper No. 9
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Autodesk, Inc.
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Serial No. 75/379,524
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Michael J. Hughes for Autodesk, Inc.
Barbara Brown, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______
Before Seeherman, Bucher and McLeod, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Autodesk, Inc., a Delaware Corporation, seeks
registration of the mark “QUICKCAD” for goods identified as
“computer programs in the nature of three dimensional
animation and graphics software, all for character based
and animation and graphics design modeling applications and
interactive multimedia applications and instructional
manuals sold as a unit therewith,” in International Class
9.1

1 Serial No. 75/379,524, filed on October 27, 1997. The
application is based upon use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a), with May 24, 1995 alleged as
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/379,524
2
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles “QUICKPEN CAD” (with the
acronym CAD disclaimed), as shown below:
for “computer software programs used for computer-aided-
design, and, computer-aided-manufacturing, and
instructional manuals sold as a unit therewith; and,
computer peripherals,” also in International Class 9,2 as to
be likely to cause confusion, to cause mistake or to
deceive.
The Trademark Examining Attorney also made final the
requirement to provide a more specific identification of
goods.
The appeal has been fully briefed, but an oral hearing
was not requested.
Turning first to the issue of likelihood of confusion,
our determination under Section 2(d) is based upon an

the date of first use of the mark anywhere and May 24, 1995
alleged as the date of first use of the mark in commerce.
2 Reg. No. 1,783,262, issued on July 20, 1993 to QuickPen
International Corp., maturing from application Ser. No.
74/153,881, filed on April 3, 1991. The registration sets forth
dates of first use of March 1993; §8 affidavit accepted and §15
affidavit received.
Serial No. 75/379,524
3
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the question of
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the goods, applicant concedes that the
goods in the cited registration are broad enough to
encompass the goods sold by applicant.
Furthermore, these identical or closely related goods
must be deemed to travel in the same channels of trade, and
be sold to the same classes of consumers.
We turn next to a consideration of the marks, noting
that “when marks would appear on virtually identical goods
or services, the degree of similarity necessary to support
a conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Applicant argues that its own mark is suggestive of “…
a CAD program which may be used easily and rapidly.” By
contrast, applicant argues that the cited mark includes
Serial No. 75/379,524
4
registrant’s house mark (“Quickpen”) and therefore has a
very different commercial impression.
The Trademark Examining Attorney contends that since
both marks contain the words “QUICK” and “CAD” in that
order, both connote computer programs that perform computer
aided design functions in a rapid or speedy manner. The
Trademark Examining Attorney dismisses the stylization of
registrant’s mark and applicant’s deletion of the element,
“PEN,” as insignificant differences. Finally, the
Trademark Examining Attorney points out that it is
unwarranted to assume that consumers would be acquainted
with the source of registrant’s product.
When we consider the marks in their entireties, we
find that they are similar. The similarity or
dissimilarity of the marks in their entirety is to be
considered with respect to appearance, sound, and
connotation. See Olde Tyme Foods, Inc. v. Roundy’s, Inc.,
961 F.2d 200, 202-03, 22 USPQ2d 1542, 1544-45 (Fed. Cir.
1992). Given the construction of these two marks, we find
that they have a similar overall appearance and sound.
“Quick…” is the first word of both marks, and both end with
the acronym “CAD.” Under actual marketing conditions,
consumers do not necessarily have the luxury of making
side-by-side comparisons between marks, and must rely upon
Serial No. 75/379,524
5
their imperfect recollections. Dassler KG v. Roller Derby
Skate Corporation, 206 USPQ 255 (TTAB 1980). In addition
to their similarities in appearance and pronunciation, they
also have the same meaning.
There is no evidence in the record supporting
applicant’s assertion that registrant uses “Quickpen” as a
house mark, or that consumers of the identified goods would
be acquainted with such asserted house mark usage. Thus,
on this record, we must consider the term “pen” in
registrant’s mark as suggestive of the identified computer
program, i.e., that the images created by this computer
application were once hand-drawn by a pen. Hence,
applicant's mark is essentially registrant’s mark, absent
the suggestive term “pen” buried in the middle.
While we acknowledge that these two marks are not
identical, we find nonetheless that because of their
similarities in appearance, sound and connotation, the
marks in their entireties convey similar commercial
impressions.
The fact that purchasers more sophisticated than
members of the general public would use applicant’s and
registrant’s goods does not avoid a likelihood of
confusion. That is, when the goods are deemed to be
identical and the marks are quite similar, even
Serial No. 75/379,524
6
knowledgeable purchasers are likely to believe the goods
come from the same source.
Finally, any doubt we may have on this issue must
necessarily be resolved in favor of registrant. In re
Hyper Shoppes (Ohio), 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988). Accordingly, the refusal to register under
Section 2(d) of the Act is affirmed.
In the interest of completeness, we turn now to the
other outstanding issue, and that is whether or not
applicant’s identification of goods is acceptable.
As noted earlier, the latest amendment to the
identification of goods now reads as follows:
“computer programs in the nature of three
dimensional animation and graphics software,
all for character based and animation and
graphics design modeling applications and
interactive multimedia applications and
instructional manuals sold as a unit
therewith.” (emphasis supplied)
The Trademark Examining Attorney made final a
requirement for a more specific and definite identification
of goods. Specifically, the Trademark Examining Attorney
wanted applicant to (1) clarify that the 3-D and graphics
software is for the “design of” interactive multimedia
applications, or (2) indicate the particular function of
the interactive multimedia applications.
Serial No. 75/379,524
7
In the event the entire identification of goods were
merely “interactive multimedia applications,” we agree with
the Trademark Examining Attorney that would be indefinite.
Consistent with Office practice, such an identification of
goods should be further modified by listing the function,
subject matter or purpose of the application.
However, even if we accept the argument of the
Trademark Examining Attorney that this portion of the
identification of goods, as now drafted, is ambiguous, this
phrase must be read within the context of the entire
wording in the identification of goods. When the
identification of goods is read in its entirety, it is
clear that “interactive multimedia applications” reflects a
type of three-dimensional animation and graphics software.
That is, the term “interactive multimedia applications”
modifies “three-dimensional animation and graphics
software” in the same manner as does the phrase “character-
based and animation and graphics design modeling
applications.” Accordingly, while the identification as
written may be a bit inartful, it is not indefinite.
Hence, we reverse the requirement of the Trademark
Examining Attorney for further amendment to the
identification of goods.
Serial No. 75/379,524
8
Decision: The refusal to register under Section 2(d)
is affirmed while the requirement for an acceptable
identification of goods is reversed.
E. J. Seeherman
D. E. Bucher
L. K. McLeod
Administrative Trademark
Judges, Trademark Trial
and Appeal Board