Call Center Tech-nologies, Inc.

Trademark Trial and Appeal Board

Nov 6, 2003

No. 75621157 (T.T.A.B. Nov. 6, 2003)

Mailed: November 6, 2003
Paper No. 12
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Call Center Technologies, Inc.
________
Serial No. 75621155
Serial No. 75621157
_______
Michael J. Foycik, Jr., Esq. for Call Center Technologies,
Inc.
Ellen Awrich, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
_______
Before Cissel, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
The two applications involved herein were filed on
January 15, 1999, by Call Center Technologies, Inc. (a
Delaware corporation) to register on the Principal Register
the marks CLICK-TO-CALL (application Serial No. 75621155)
and CLICK2CALL (application Serial No. 75621157), both for
services identified, following amendment, as “providing
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 75621155 and 75621157
2
local and long distance telephone services via global
computer networks for the electronic transmission of voice
and data” in International Class 38. Applicant asserts, in
each application, a bona fide intention to use the mark in
commerce.
The Examining Attorney has refused registration in
each application under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), on the ground that applicant’s mark
(CLICK-TO-CALL or CLICK2CALL), when used in connection with
applicant’s services, would so resemble the registered mark
CLICK-N-CALL for “computer software, namely, software for
enabling voice or other auditory communications over
computer and/or telephone network” in International Class
9.1
When the refusal to register was made final, applicant
appealed in each application. Applicant and the Examining
Attorney have filed briefs, but applicant did not request
an oral hearing.
In view of the common questions of law and fact which
are involved in these two applications, and in the
interests of judicial economy, we have consolidated the
1 Registration No. 2217646, issued January 12, 1999.
Ser. Nos. 75621155 and 75621157
3
applications for purposes of final decision. Thus, we have
issued this single opinion.
We affirm the refusals to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The Examining Attorney contends that each of
applicant’s marks (CLICK-TO-CALL and CLICK2CALL) is very
similar to the registered mark CLICK-N-CALL, as all of the
marks use the identical words “click” and “call,” and all
use non-distinctive connectors, “to” or “2” or “n,” and one
of applicant’s marks uses hyphens to separate the words and
the connector, as does registrant’s mark; that each of
applicant’s marks is similar in sound, appearance,
connotation and overall commercial impression to the cited
registered mark; that the goods and services are related
Ser. Nos. 75621155 and 75621157
4
and consumers understand that registrant’s computer
software for enabling voice or other auditory
communications over a computer and/or a telephone network
and applicant’s local and long distance telephone services
via global computer networks are used for the same purpose,
specifically, the transmission of voice over computer
networks; and that because applicant’s services and
registrant’s goods will be used in voice communication with
call center representatives over the Internet, the same
consumers will encounter the goods and services.
Applicant contends that the marks, considered in their
entireties, are different; that applicant’s services and
the cited registrant’s goods travel through distinct
channels of trade to different consumers, with applicant’s
services directed to the end consumers, while registrant’s
goods are directed to the providers of such telephone
services; that the relevant purchasers are sophisticated;
that there have been no instances of actual confusion; and
that the owner of the cited registration did not oppose a
third party’s application to register the mark CLICK TO
CALL (application Serial No. 75494850), although applicant
did successfully oppose the third-party application.
Turning first to a consideration of the cited mark and
each of applicant’s marks, we find that they are very
Ser. Nos. 75621155 and 75621157
5
similar in sound, appearance, connotation and commercial
impression. All of the involved marks consist of the words
“click,” “call” and a connector (“to” or “2” or “n”). In
addition, applicant’s CLICK-TO-CALL mark and the registered
mark both include hyphens. The minor differences are not
likely to be recalled by purchasers seeing the marks at
separate times. Under actual market conditions, consumers
do not have the luxury of a side-by-side comparison of the
marks; and further, we must consider the recollection of
the average purchaser, who normally retains a general,
rather than a specific, impression of the many trademarks
encountered. Thus, the purchaser’s fallibility of memory
over a period of time must also be kept in mind. See
Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); and Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d
unpub’d (Fed. Cir., June 5, 1992).
Applicant’s marks and the registered mark are highly
similar in connotation, all connoting how easy it is to use
applicant’s services or registrant’s goods relating to
telephone networks by simply “clicking” in order to place a
“call.”
Turning next to a consideration of the respective
goods and services, it is well settled that goods and/or
Ser. Nos. 75621155 and 75621157
6
services need not be identical or even competitive to
support a finding of likelihood of confusion; it being
sufficient that the goods and/or services are related in
some manner or that the circumstances surrounding their
marketing are such that they would likely be encountered by
the same persons under circumstances that could give rise
to the mistaken belief that they emanate from or are
associated with the same source. See In re Peebles Inc.,
23 USPQ2d 1795, 1796 (TTAB 1992); and In re International
Telephone and Telegraph Corporation, 197 USPQ 910 (TTAB
1978).
It has been repeatedly held that, when evaluating the
issue of likelihood of confusion in Board proceedings
regarding the registrability of marks, the Board is
constrained to compare the goods and/or services as
identified in the application with the goods and/or
services as identified in the registration. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce, N. A. v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987).
Also, confusion in trade can occur from the use of
similar (or the same) marks for products, on the one hand,
and for services involving those products, on the other
Ser. Nos. 75621155 and 75621157
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hand. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); Safety-Klean Corporation v.
Dresser Industries, Inc., 518 F.2d 1399, 186 USPQ 476 (CCPA
1975); and Steelcase Inc. v. Steelcare Inc., 219 USPQ 433
(TTAB 1983), and cases cited therein.
In this case, the registered mark is for “computer
software, namely, software for enabling voice or other
auditory communications over computer and/or telephone
network,” while applicant intends to offer the service of
“providing local and long distance telephone services via
global computer networks for the electronic transmission of
voice and data.” The Examining Attorney submitted
printouts of numerous third-party registrations, based on
use in commerce, listing these types of goods and services
in connection with the same marks. See, for example,
Registration No. 2612061 for “computer telephony systems
comprised of computer hardware and computer operating
software that integrates telephone systems with computer
systems, …” and “telephone communication services in the
nature of providing computer telephone communications
services, including call center services and interactive
voice response telephony services”; Registration No.
2585702 for “computer hardware and software for use in
transmitting and receiving audio, video, text and data
Ser. Nos. 75621155 and 75621157
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files via local area networks, wide area computer networks
and global computer networks, … computer hardware and
software for use in digital telephony” and “providing high
speed telecommunications connections to computer and
communications networks; digital telephony communication
services, ….”; Registration No. 2355506 for
“telecommunications equipment, namely telephone handsets
and telephone systems comprised of private branch exchange
(PBX), hybrid private branch exchange (PBX) and key
telephone systems, and software for use therewith for
providing electronic voice and data messaging,…” and
“telecommunications services, namely, local and long-
distance calling services”; and Registration No. 2508935
for “computer software for use over telecommunications
networks, namely, communications software for use in
transmitting messages, data and multimedia information over
a global network, …” and “telecommunications services,
namely, electronic transmission of messages and data, … and
telephone communications services.”
When considering the third-party registrations
submitted by the Examining Attorney, we are aware that such
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them. Such
third-party registrations nevertheless have some probative
Ser. Nos. 75621155 and 75621157
9
value to the extent they may serve to suggest that such
goods and services are of a type which emanate from the
same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB 1988).
The Examining Attorney also relies on applicant’s
promotional materials submitted in response to an inquiry
from the Examining Attorney, which include the following
statement:
Is Click2Call an Internet telephony
service? YES- Click2Call provides
the ability for your customers to talk
over the Internet using Voice over
Internet Protocol, or “VoIP”
technology. Click2Call allows your
customers equipped with multimedia PCs
to speak with a call center
representative on the same telephone
line, without disconnecting from the
Internet.
While applicant contends that the trade channels are
“entirely different,” applicant does not explain what those
specific different trade channels are for these goods and
services. To the contrary, however, the Examining Attorney
has submitted printouts of third-party registrations
indicating the same entities offer both of these goods and
services under the same mark.
Applicant argues that the purchasers of registrant’s
goods are the providers of communication over the Internet
Ser. Nos. 75621155 and 75621157
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and/or a telephone network, whereas the purchasers of
applicant’s services are the end users, who are not
concerned with how applicant provides the service. We are
not persuaded by applicant’s argument regarding entirely
different and distinct purchasers because (i) the
identifications of goods and services are not restricted in
any way with regard to purchasers (or trade channels); and
(ii) there is evidence of record to the contrary.
The Examining Attorney submitted printouts from two
third-party web sites, both of which refer to and discuss
how end consumers will use registrant’s software. See the
following quotes therefrom:
Net Steps in with Support for Customer
…
Another innovative solution for easier
Web support comes from Boulder-based
Gold Systems’ [registrant] Click-N-Call
technology [web site omitted]. By
installing Intel Internet phone
software, customers can go to a Web
site, click on a button with their
mouse, and the phone automatically
starts up, connecting to a call center
or Web-based business.
…
Although users need a sound card,
speakers, microphone and free Internet
telephone software you can download
from Gold’s site, it’s still worth the
time and effort.
www.coloradowit.org; and
Sun, Microsoft Courting Boulder Java
Developer
…
Ser. Nos. 75621155 and 75621157
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The Boulder-based Gold Systems, Inc., a
communications software development
company, has spun off a subsidiary
Click-N-Call Inc., which has entered
the Internet telephony field with a
namesake product that allows Netizens
to click a button on a company’s Web
site and be connected to a customer
service representative on a telephone.
The Web user can speak to the
representative through their multimedia
computer without disconnecting from the
Internet. Because the call is made
using the Internet connection,
customers can view Web pages while
talking to the representative. The
agent can then guide the customer
through the Web site, answering
questions, taking orders or providing
other services.
…
www.bcbr.com.
Thus, the record shows that registrant’s consumers
include end users, i.e., the general public. Applicant’s
arguments that registrant’s customers consist only of the
providers of telephony services and that these customers
are sophisticated purchasers are unsupported by evidence.
Moreover, no such restrictions are in applicant’s and/or
registrant’s identifications of goods. Thus, even if
evidence of specific trade channels and/or sophisticated
consumers were of record, it would not be persuasive.
Even if the consumers are relatively sophisticated,
i.e., consumer-literate purchasers, they are likely to
believe that the parties’ respective goods and services
Ser. Nos. 75621155 and 75621157
12
come from the same source, if offered under the involved
substantially similar marks. See Weiss Associates Inc. v.
HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990); and Aries Systems Corp. v. World Book Inc., 23
USPQ2d 1742, footnote 17 (TTAB 1992).
We find the respective goods and services are closely
related, and could be sold through the same channels of
trade, to the same classes of purchasers, which include the
public at large.
Although applicant’s attorney has represented that
there have been no instances of actual confusion since
applicant commenced use of its mark in March 1999, this
unsubstantiated statement is entitled to no consideration.2
Majestic Distilling Co., supra, 65 USPQ2d at 1205 (“With
regard to the seventh DuPont factor, we agree with the
Board that Majestic’s uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value.”). Importantly, in this case, the applications are
based on Section 1(b) (bona fide intention to use the mark)
2 Applicant included for the first time with its brief on appeal,
a declaration of Dean Vlahos, applicant’s president, that
applicant commenced use of the marks CLICK-TO-CALL and CLICK2CALL
in March 1999. (The declaration does not refer to the lack of
actual confusion in any manner.) This evidence is untimely under
Trademark Rule 2.142(d) and the Board has not considered it.
Even if it had been considered, it would not alter our decision
herein.
Ser. Nos. 75621155 and 75621157
13
of the Trademark Act, and there is no evidence of
applicant’s and the cited registrants’ geographic areas of
sales, or the amount of the sales under the respective
marks. Further, there is no information from the
registrant. In any event, the test is likelihood of
confusion, not actual confusion. See Weiss Associates Inc.
v. HRL Associates Inc., supra; and In re Kangaroos U.S.A.,
223 USPQ 1025 (TTAB 1984).
Finally, applicant’s argument that the owner of the
cited registration did not oppose a third-party’s mark
CLICK TO CALL is simply irrelevant. There is no
information of record as to why registrant did not act
against the third-party application, and this argument
involves speculation by applicant. See In re Dixie
Restaurants, supra.
Decision: The refusal to register under Section 2(d)
is affirmed in each application.