Computer Systems Authority, Inc.

Trademark Trial and Appeal Board

Oct 17, 2000

No. 75191176 (T.T.A.B. Oct. 17, 2000)

10/17/00
Paper No. 17
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Computer Systems Authority, Inc.
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Serial No. 75/191,176
_______
Kay Lyn Schwartz of Gardere & Wynne, L.L.P. for Computer
Systems Authority, Inc.
John E. Michos, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On November 1, 1996, Computer Systems Authority, Inc.,
(a Texas corporation), filed an application by which it
seeks registration on the Principal Register of the mark
CSA for services identified in the application, as amended,
as “computer services, namely consulting services
specifically relating to implementation and technical
support of existing major applications currently on the
market” in International Class 42. The claimed date of
first use and first use in commerce is August 30, 1996.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/191176
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with
its identified services, so resembles the registered marks
CSA1 and CSA/GENSA2, both owned by Computerized Structural
Analysis & Research Corporation (a California corporation),
and both for “computer software design for others; updating
of computer software; and computer consultation” in
International Class 42, as to be likely to cause confusion,
mistake or deception.
When the refusal was made final, applicant filed this
appeal. Briefs have been filed, but an oral hearing was
not requested.
We turn first to a consideration of the marks. One of
the cited registrations (Registration No. 2,091,257) for
the mark CSA and applicant’s mark are identical.3 This fact
“weighs heavily against applicant.” In re Martin’s Famous
1 Registration No. 2,091,257, issued August 26, 1997, (from an
application filed September 16, 1996). The claimed dates of
first use and first use in commerce are April 1, 1982 and April
25, 1985, respectively.
2 Registration No. 2,050,894, issued April 8, 1997, (from an
application filed May 13, 1996). The claimed dates of first use
and first use in commerce are December 1995 and January 24, 1996,
respectively.
3 Because applicant’s mark is identical to one of the cited
registrant’s two marks, we need not reach the question of whether
there is a likelihood of confusion between applicant’s mark and
the cited registrant’s second mark, “CSA/GENSA.”
Ser. No. 75/191176
3
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
(Fed. Cir. 1984). Indeed, the fact that an applicant has
selected the identical mark of a registrant “weighs [so]
heavily against the applicant that applicant’s proposed 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, 1688-1689
(Fed. Cir. 1993). “The greater the similarity in the
marks, the lesser the similarity required in the goods or
services of the parties to support a finding of likelihood
of confusion.” 3 J. McCarthy, McCarthy on Trademarks and
Unfair Competition, §23:20.1 (4th ed. 1999).4
Moreover, there is no evidence that the combination of
the letters CSA (even if derived from the initial letters
of the applicant’s and registrant’s respective corporate
names) have any special meaning, aside from trademark
significance, to purchasers of the involved services. CSA
is unpronounceable except as the separate letters, and
would be more difficult to remember, and thus, more
4 Applicant cited several cases wherein the Board (or a Court)
found “identical” marks would not result in a likelihood of
confusion. Suffice it to say that each of the cited cases is
easily distinguished on its facts (for example, the marks were
not identical, with some including designs, and/or there were
differences in the goods/services, and/or consent agreements were
involved, and/or the cases were inter partes in nature).
Ser. No. 75/191176
4
susceptible of confusion, or mistake. See Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (confusion found likely in
contemporaneous use of TMM and TMS on computer software).
Applicant’s argument that the cited registrant’s marks
are entitled to a narrow scope of protection, based on the
results of applicant’s search of a private database5 showing
fourteen active federal marks which consist of or include
the letters CSA, is unpersuasive.6 Regarding the fourteen
listings submitted by applicant, two are pending trademark
applications (one of which is applicant’s involved
application), and are of no probative value. Applicant’s
listing also included one of the two cited registrations.
As for the eleven third-party registrations for marks
consisting of or including the letters CSA, all are for
unrelated goods/services such as, wholesale
distributorships featuring exercise equipment; clothing;
jewelry; inflatable mattresses for camping; surgical suite
5 While normally the records from a private database are not
admissible [see Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB
1992)], because the Examining Attorney has treated them as of
record, the Board has considered the third-party registrations in
our decision.
6 Applicant also argued that this evidence shows the cited
registrant’s marks are not “famous.” We disagree that a search
shows whether a mark is or is not famous. Inasmuch as there is
no evidence of the fame of the cited registrant’s marks, this du
Pont factor is not relevant in this ex parte record.
Ser. No. 75/191176
5
and clinical laboratory instruments; underwriting insurance
services; custom designing construction projects for
others; publications concerning industrial, commercial and
domestic technical standards7; and a certification mark for
the safety of electronic goods. Applicant did not submit
any third-party registrations of the mark CSA in the
relevant field of computer consultation services. And, in
any event, third-party registrations are of little weight
in determining likelihood of confusion as they are not
evidence of third-party use of the marks shown therein and
they are not proof that the purchasing public is familiar
with them so as to be accustomed to the existence of
similar marks in the marketplace.
Even if applicant had shown that the cited mark CSA is
weak, such marks are still entitled to protection against
registration by a subsequent user of the same or similar
mark for the same or related goods. See Hollister
Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB
1976).
We turn to a consideration of the cited registrant’s
services and applicant’s services. Applicant contends that
“the services marketed in connection with Applicant’s mark
7 We note that this registration issued based on Section 44 of
the Trademark Act, not on use in commerce.
Ser. No. 75/191176
6
are distinctively different from those services marketed by
the cited Registrant...” (brief, p. 8); that “the very
specialized nature of the registrant’s and the Applicant’s
respective services indicates that they are marketed to
very specific and different purchasers through generally
different channels of trade” (brief, p. 10); and that “the
actual services offered by Applicant are quite different
from the services offered by Registrant, and are directed
to a different class of consumers” (brief, p. 10).
Applicant offered no evidence thereof.
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 services (or goods) as
identified in the application with the services (or goods)
as identified in the registration. See In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997); Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987).
Applicant’s identification of services is specific in
that its computer consultation services relate to
Ser. No. 75/191176
7
“implementation and technical support of existing major
applications currently on the market.” However, the cited
registrant’s identification of services includes no
restrictions and of course registrant’s broader “computer
consultation” services would encompass those offered by
applicant. We find that the respective services, as
identified, are overlapping because applicant’s services
are included within registrant’s services.
In any event, it is well settled that goods or
services need not be identical or even competitive in order
to support a finding of likelihood of confusion. Rather,
it is sufficient that the goods or services are related in
some manner 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 used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of the goods or services.
See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and
In re International Telephone & Telegraph Corp., 197 USPQ
910 (TTAB 1978).
Here there is no restriction to the channels of trade
or the types of purchasers in either the application or the
Ser. No. 75/191176
8
registration. See Canadian Imperial Bank v. Wells Fargo
Bank, supra. Therefore, the Board must assume that
applicant’s services could move through all the ordinary
and normal channels of trade for such services, and would
be offered to all the usual purchasers (including the
general public) for such services. See Octocom Systems
Inc. v. Houston Computer Services Inc., supra, at 1787; In
re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991).
Even if we assume that the purchasers and users of the
services in question in the instant case are somewhat
careful and sophisticated purchasers, and do not purchase
computer consultation services on impulse, this does not
mean that such purchasers and users are immune from
confusion as to the origin of the respective services,
especially when sold under the identical mark. See Weiss
Associates Inc. v. HRL Associates Inc., supra; and Aries
Systems Corp. v. World Book Inc., 23 USPQ2d 1742, footnote
17 (TTAB 1992).
According to applicant, there have been no instances
of actual confusion despite “extensive advertising” (brief,
p. 11) by applicant. However, applicant offered no
specific information of record regarding its alleged
Ser. No. 75/191176
9
“extensive advertising,” nor of any sales; and there is no
information from the registrant. In any event, the test is
likelihood of confusion, not actual confusion. See In re
Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984).
While we have no doubt in this case, if there were any
doubt on the question of likelihood of confusion, it must
be resolved against the newcomer as the newcomer has the
opportunity of avoiding confusion, and is obligated to do
so. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988).
Based on the identity of the marks, the overlapping
nature of the parties’ respective services, and the
similarity of the trade channels and purchasers, we find
that there is far more than a mere possibility of
confusion; there is a likelihood that the purchasing public
would be confused when applicant uses CSA as a mark for its
identified computer consultation services.
Decision: The refusal to register under Section 2(d)
is affirmed.
R. F. Cissel
T. J. Quinn
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board