Casaworks, Inc.

Trademark Trial and Appeal Board

May 4, 2007

No. 78349045 (T.T.A.B. May. 4, 2007)

Mailed: May 4, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Casaworks, Inc.,
Assignee of Metrics Technology, Inc.1
________

Serial No. 78349045
_______

Vidal A. Oaxaca of Peacock Myers, P.C. for Casaworks, Inc.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Seeherman, Drost and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by the predecessor in
interest of Casaworks, Inc. to register on the Principal
Register the mark shown below

1 Assignment of application Serial No. 78349045, originally filed
by Metrics Technology, Inc. to the above-named applicant was
recorded on September 14, 2004 with the Assignment Branch of the
United States Patent and Trademark Office at Reel 2935/Frame
0524.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78349045
2
for “Computer hardware and software, namely, a residential
gateway for controlling multiple home systems comprising
security, lighting, HVAC, audio/video, irrigation, power
management, appliances and other systems” in International
Class 9.2 Applicant has provided the following translation
statement: the term “cielo” is the Spanish word for “sky,”
“ceiling,” or “heaven.”
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with applicant’s
goods, so resembles the following marks, previously
registered by the same entity:
CIELO
in standard character form, for
transceivers; high frequency signal connectors;
optical interconnect modules; optical
interconnect network equipment, namely hubs,
switches, routers, transceivers and associated
components; optical interconnect modules; lasers,
light emitting diodes and photodiodes for
communication, storage devices, namely devices
that use optical components to read or write
data, or control position and laser disc players

in International Class 9;3 and the mark shown below

2 Application Serial No. 78349045 was filed January 7, 2004,
based upon applicant’s allegation of use of the mark anywhere and
in commerce since August 1, 2003.

3 Registration No. 2599901 issued July 30, 2002. The
registration also recites goods in International Class 10.
Ser No. 78349045
3

for

transceivers; high frequency signal connectors;
optical interconnect modules; optical
interconnect network equipment, namely hubs,
switches, routers, transceivers, transmitter and
receiver optical subassemblies, transponders,
integrated circuits for use with lasers and
photodetectors; lasers, light emitting diodes and
photodiodes for communication; lasers, light
emitting diodes and photodiodes for storage
devices, namely devices that use optical
components to read or write data or to control
position; lasers, light emitting diodes and
photodiodes for laser disc players

in International Class 9,4 as to be likely to cause
confusion. In both registrations, the registrant has
provided the following translation: The English
translation of the word “cielo” in the mark is “heaven” or
“sky.”
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs on
the issue under appeal.
Evidentiary Matters

4 Registration No. 2460792 issued June 19, 2001.

Ser No. 78349045
4
Before turning to the substantive ground for refusal,
we note that applicant has submitted several exhibits with
its brief. These exhibits consist of printouts from
Internet web pages describing the goods provided under both
applicant’s and registrant’s marks. We agree with the
examining attorney that these exhibits are untimely, and
they have not been considered. See Trademark Rule 2.142(d)
(the record in the application should be complete prior to
the filing of an appeal).
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, 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, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
Ser No. 78349045
5
The Marks
Because applicant’s mark is most similar to the mark
in Registration No. 2599901 for CIELO, we first address the
question of likelihood of confusion with respect to this
registration. We begin by considering the similarities and
dissimilarities between the marks. In coming to our
determination, we must compare the marks in their
entireties as to appearance, sound, connotation and
commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). 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 their entireties that confusion as to the source
of the goods offered under the respective marks is likely
to result.
In comparing the marks, we find that the word portion
of applicant’s mark is identical to the mark in the cited
registration in sound, and nearly identical in appearance
in that the word portion of applicant’s mark is the same as
the cited mark. In addition, we note that registrant’s
CIELO mark is registered in typed or standard character
form, and thus is not limited to any special form or style
as displayed on its goods. See Phillips Petroleum Co. v.
Ser No. 78349045
6
C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 26 (CCPA
1971). See also Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000). As a
result, the protection to be accorded registrant’s CIELO
mark includes the font in which the applied-for mark
appears.
In terms of connotation, we find that the connotations
of the marks are identical. To the extent that consumers
would understand the meaning of the foreign word CIELO,
this term has the same meaning in both marks. And for
those consumers who are not familiar with this word, CIELO
will appear as the identical arbitrary term. In addition,
we find that the design element in applicant’s mark is
insufficient to distinguish it from registrant’s CIELO
mark.5 If a mark comprises both a word and a design, then
the word is normally accorded greater weight because it
would be used by purchasers to request the goods or
services. See In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987). For this reason, we consider the word

5 We note that there exists disagreement between the examining
attorney and applicant as to the nature of the design element in
applicant’s mark. Applicant identifies it as “a highly stylized
design of a house” (brief, p.4) while the examining attorney
characterizes it as an “arrow design” (brief, unnumbered p.9).
These differing characterizations show that the design element is
rather abstract, and provides further support that consumers are
likely to refer to the mark by the word CIELO, instead of the
unclear design element.
Ser No. 78349045
7
portion, i.e., “CIELO,” to be the dominant feature of
applicant’s mark. We further find that, on the facts
before us, and in the absence of any evidence to the
contrary, CIELO is a strong mark, and as such is entitled
to a broad scope of protection.
In view of the foregoing, we find that, when
applicant’s mark and registrant’s CIELO mark are compared
in their entireties, they are sufficiently similar in
appearance, sound, connotation and commercial impression
that, if used in connection with related goods, confusion
would be likely to occur. As such, this du Pont factor
favors a finding of likelihood of confusion.
The Goods
Turning now to our consideration of the recited goods,
we note that it is not necessary that the goods at issue be
similar or competitive, or even that they move in the same
channels of trade, to support a holding of likelihood of
confusion. It is sufficient instead that the respective
goods are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
Ser No. 78349045
8
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978). The issue, of course, is not whether
purchasers would confuse the goods, but rather whether
there is a likelihood of confusion as to the source
thereof. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
In considering the goods we note that, as identified
above, applicant’s goods are “Computer hardware and
software, namely, a residential gateway for controlling
multiple home systems comprising security, lighting, HVAC,
audio/video, irrigation, power management, appliances and
other systems.” We take judicial notice of the following
definition of “residential gateway:” “a device that allows
multiple devices access to the Internet through a single
high-speed connection.”6 Thus, applicant’s goods may be
described as computer hardware and software that allow a
user to access and control multiple home systems via the
Internet. The goods identified in Registration No.
2599901, while not specifically directed to control of
various home systems, are not limited to any particular
field of use. We look then to the evidence of record to

6 Webster’s New Millennium(tm) Dictionary of English, Lexico
Publishing Group, LLC (2003-2006). The Board may take judicial
notice of dictionary definitions. See University of Notre Dame
du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982); aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Ser No. 78349045
9
determine whether a relationship exists between
registrant’s goods and those of applicant.
In this case, the examining attorney has made of
record a number of use-based third-party registrations
which show that various entities have adopted a single mark
for goods that are identified in both the application at
issue and the cited registration. See, for example:
Registration No. 2543008 for, inter alia, switches,
residential gateways, namely, electronic devices that
provide distributed switching for the delivery of
multimedia services;
Registration No. 2573273 for, inter alia, residential
gateways and routers;
Registration No. 2597389 for, inter alia, residential
gateways and routers;
Registration No. 2782474 for, inter alia, residential
gateways, home gateways, video gateways, namely, electronic
devices, namely, routers and switches; and
Registration No. 2543008 for, inter alia, switches and
residential gateways, namely, electronic devices that
provide distributed switching for the delivery of
multimedia services.
Third-party registrations which individually cover a
number of different items and which are based on use in
Ser No. 78349045
10
commerce serve to suggest that the listed goods and/or
services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1786 (TTAB 1993). In this case, it appears that
registrant’s general purpose goods may be used as
components of applicant’s more specialized goods or
applicant’s and registrant’s goods otherwise may be used
together as components of larger electronic systems. In
its brief applicant, while arguing that registrant’s goods
are used by different end users from those who would
purchase its own goods, acknowledges that registrant’s
goods
are of the type that are ubiquitous (i.e.
electronic and computer parts.) Such a general
category of components is found everywhere.
Applicant’s goods are field and consumer
specific.

(brief, p. 13). Although the identification of goods in
the cited registration does not specify that the goods are
used for control of electronic home systems, because the
identification does not limit the uses for the goods, we
must consider them as being appropriate for use in such
systems. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
As a result, we find that the goods are related such that
consumers could, because of the similarity of the marks,
Ser No. 78349045
11
mistakenly believe that they originate from the same
source.
In short, the foregoing evidence demonstrates the
related nature of the goods at issue, and this du Pont
factor also favors a finding of likelihood of confusion.
Channels of Trade
We are not persuaded by applicant’s arguments that its
goods are marketed to different end users from those of
registrant. It is settled that in making our determination
regarding the relatedness of the parties’ goods, we must
look to the goods as identified in the involved application
and cited registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”)
Ser No. 78349045
12
In this case, neither the goods identified in the
subject application nor the cited Registration No. 2599901
contains any limitations as to the marketing channels or
prospective purchasers thereof. Furthermore, because the
evidence of record demonstrates that both applicant’s and
registrant’s goods may emanate from the same source and be
used together, they are likely to be purchased by the
designers, contractors and installers of systems
incorporating such goods, as well as the ultimate consumers
thereof.
Accordingly, both applicant’s and registrant’s goods
are presumed to move in all normal channels of trade and be
available to all classes of potential consumers. See In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). Therefore, in this
case, we find that the same consumers would purchase both
applicant's and registrant's goods and they would be sold
in the same channels of trade such as home electronics
stores and electrical supply stores.
Sophistication of Purchasers
The final du Pont factor discussed by applicant and
the examining attorney is that of the conditions of sale.
Applicant asserts that registrant’s goods would be
purchased by careful and sophisticated users. However,
sophisticated purchasers are not necessarily knowledgeable
Ser No. 78349045
13
in the field of trademarks or immune from source confusion.
See In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988).
Moreover, in view of the third-party registrations,
sophisticated purchasers would be aware that both
applicant’s and registrant’s goods are of a type which may
emanate from a single source, and therefore are likely to
believe that these goods, if sold under the same or a
confusingly similar mark, emanate from the same source.
There is no evidence in the record as to the cost of the
switches and routers identified in the cited registration,
but even if we assume that some degree of care were
exhibited in making the purchasing decision, applicant’s
mark is so similar to registrant’s CIELO mark that even
careful purchasers are likely to assume that the marks
identify goods emanating from a single source.
Neither applicant nor the examining attorney has
discussed any of the remaining du Pont factors. We note,
nonetheless, that none seems to be applicable, inasmuch as
we have no evidence with respect to them.
Conclusion
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced CIELO mark would be likely to believe, upon
encountering applicant’s goods rendered under the applied-
Ser No. 78349045
14
for mark, that the goods originated with or are somehow
associated with or sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Having found that applicant’s mark is confusingly
similar to registrant’s CIELO mark in cited Registration
No. 2599901, we need not and do not consider the similarity
or dissimilarity between applicant’s mark and the mark in
cited Registration No. 2460792.
Decision: The refusal of registration under Trademark
Act Section 2(d) is affirmed as to Registration No.
2599901.