Computer People Inc.

Trademark Trial and Appeal Board

Apr 17, 2001

No. 74619905 (T.T.A.B. Apr. 17, 2001)

4/17/01
Paper No. 26
UNITED STAT
Tradem
In re Computer People
S
Anthony R. Masiello an
LLP for Computer Peopl
David H. Stine, Tradem
(Margaret Le, Managing
Before Simms, Bucher a
Judges.
Opinion by Bucher, Adm
Computer People I
Register of the mark A
application as follows
“Computer ne
mainten
Interna
“Computer co
physica
and dis
Class 4
1 Application Serial
Systems, Inc., on Januar
allegation of a bona fid
March 16, 1995, an amend
both classes dates of fi
commerce as of January 1
States Patent & Trademar
application to ComputerTHIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
DEB
ES PATENT AND TRADEMARK OFFICE
________
ark Trial and Appeal Board
________
Inc. (by assignment from Alpine Computer
Systems, Inc.)
________
erial No. 74/619,905
_______
d Thomas W. Brooke of Gadsby & Hannah
e Inc.
ark Examining Attorney, Law Office 114
Attorney).
_______
nd Bottorff, Administrative Trademark
inistrative Trademark Judge:
nc. seeks registration on the Principal
LPINE, for services recited in the
:
twork system installation and
ance support services,” in
tional Class 37; and,
nsulting services in the fields of
l infrastructure systems, security
aster planning,” in International
2.1
Number 74/619,905, filed by Alpine Computer
y 10, 1995, was based upon applicant’s
e intention to use the mark in commerce. On
ment to allege use was filed claiming as to
rst use anywhere and dates of first use in
989. The assignment records of the United
k Office reflect an assignment of this
People Inc. as of February 28, 1998.
Serial No. 74/619.905
- 2 -
The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act, 15 USC §1052(d) on the
ground that applicant’s mark, when used on applicant’s goods,
so resembles the mark ALPINE which is registered for:
computer keyboard terminals; floppy disk
drives; mobile computers; office computers;
personal computers; computer programs used to
create and develop computer software, and used
to support creating and developing micro-
computers, recorded on cards, tapes, and disks;
modems; computer and facsimile interfaces; and
mobile facsimile machines and parts thereof,2
as to be likely to cause confusion, to cause mistake, or to
deceive.
When the refusal was made final, applicant appealed.
Applicant and the Trademark Examining Attorney have filed main
briefs. Applicant did not request an oral hearing. We affirm
the refusal to register.
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. See In re E.I. du Pont de Nemours and 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
2 Registration No. 2,055,630, issued April 22, 1997.
Serial No. 74/619.905
- 3 -
the goods and/or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
In this case, the marks are absolutely identical. The
fact the marks are identical “weighs heavily against
applicant.” In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). Indeed, the
fact that applicant has selected a mark identical to
registrant’s mark “weighs [so] heavily against the applicant”
that applicant’s use of the mark on “goods ... [which] are not
competitive or intrinsically related [to registrant’s goods]
... can [still] lead to the assumption that there is a common
source.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1688-89 (Fed. Cir. 1993).
Inasmuch as the marks herein are identical in all
respects, the issue of likelihood of confusion essentially
depends upon whether the respective goods and services are
sufficiently related.
It is well settled, in this regard, that goods and/or
services need not be identical or even competitive in nature in
order to support a finding of likelihood of confusion.
Instead, it is sufficient that the goods and services are
related in some manner and/or that the circumstances
surrounding their marketing are such that they would be likely
to be encountered by the same persons in situations that would
give rise, because of the marks employed in connection
Serial No. 74/619.905
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therewith, to the mistaken belief that they originate from or
are in some way associated with the same producer or provider.
See, Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96
(TTAB 1978) and In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978). Also, confusion in
trade can occur from the use of the same marks for products on
the one hand and for services involving those products on the
other 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.
Applicant argues, however, that its highly specialized
services are offered to sophisticated customers.
Specifically, applicant maintains that:
… [A]pplicant’s customers expect that
applicant’s services will be offered in a
context filled with products coming from a wide
variety of other sources. Applicant’s services,
by its [sic] nature, is to solve technical
problems regardless of the source of the
customer’s hardware and software. That is what
the customers expect of their experts…. The
applicant’s customer, considering the services
offered, knows that what is offered is expertise
rather than goods. (applicant’s brief, p. 3,
emphasis in original).
The Examining Attorney, on the other hand, notes that the
issue of likelihood of confusion must be determined on the
basis of the goods and services as they are identified in the
cited registration and the application, and notes that neither
Serial No. 74/619.905
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contains any limitations as to nature, type, channels of trade
or class of purchasers. As to the sophistication of the
customers, the Trademark Examining Attorney correctly points
out that the fact that purchasers are sophisticated or
knowledgeable in a particular field does not necessarily mean
that they are sophisticated or knowledgeable in the field of
trademarks or immune from source confusion. See In re Decombe,
9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221
USPQ 558 (TTAB 1983).
We agree with the Trademark Examining Attorney that in
determining the question of likelihood of confusion, the Board
is constrained to compare the services recited in applicant’s
application with the goods as identified in the cited
registration. If registrant’s goods and applicant’s services
are described broadly enough to encompass overlapping markets,
then applicant cannot properly argue that, in reality, the
actual services of the applicant and the goods of the cited
registrant are not similar. See Canadian Imperial Bank of
Commerce, National Association v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987); CBS, Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983); and Peopleware
Systems, Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985).
We find the evidence of record sufficient to conclude
that applicant’s services are related to the goods identified
Serial No. 74/619.905
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in the cited registrations, and applicant has provided no
evidence to the contrary. Nor are we convinced otherwise by
applicant’s arguments regarding the specific nature of its
services or registrant’s goods. We note that both applicant’s
services and registrant’s goods are broadly identified.
Further, we must presume that applicant’s services and
registrant’s goods are sold in all of the normal channels of
trade to all the normal purchasers of such goods. In re
Elbaum, 211 USPQ 639 (TTAB 1981).
Applicant's consulting, installation and maintenance
services are directed to entities having large, integrated
computer networks. Registrant’s goods include a variety of
components of computer hardware and software. In this
context, we certainly agree with applicant that not everything
involving the use of computers is necessarily related. See
Reynolds & Reynolds Co. v. I.E. Systems Inc., 5 USPQ2d 1749
(TTAB 1987). Accordingly, under the facts of the Reynolds
case, the Board concluded that applicant’s asynchronous data
communications software and the opposer’s tax preparation
forms and services were targeted to two distinctly different,
narrow markets.
By contrast, in the instant case, applicant’s services
are targeted broadly to applicant’s clients having computer
network systems. It is basic to the infrastructure of a
Serial No. 74/619.905
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computer network that individual workstations – made up of
hardware and local software of the type described in
registrant’s identification of goods – comprise critical
components of such an integrated computer network. According
to applicant’s web pages, which have been made of record, its
services include working toward “upgraded desktops” for its
clients. To the extent that a large entity had purchased
desktop computer hardware and software from registrant in the
past, applicant may well later offer its networking services
to the same network engineers, designers and managers who
purchased components for its desk-top workstations from
registrant. Consequently, applicant’s services would be sold
through the same channels of trade to the same classes of
purchasers – including its large-entity clients already
familiar with registrant’s goods.
Consequently, we find that the respective goods and
services involved in this case are, on their face, so closely
related that, when sold under the identical (and arbitrary)
mark ALPINE, confusion as to their source or sponsorship is
likely to occur, even among engineers, designers and managers
of information technologies making up applicant’s client base.
Based on the identity of the marks, the relatedness of
registrant’s goods and applicant’s services, and the
similarity of the trade channels and purchasers, we find that
there is a likelihood that the purchasing public would be
Serial No. 74/619.905
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confused when applicant uses ALPINE as a mark for its
networking services.
Decision: The refusal to register under Section 2(d) is
affirmed.