Cybernet Systems Corp.

Trademark Trial and Appeal Board

Jun 6, 2001

No. 75476392 (T.T.A.B. Jun. 6, 2001)

HEARING: 6/6/01
March 27, 2001
UNITED STATE
Trademar
In re Cyb
Se
John G. Posa and Julie
Sprinkle Anderson & Ci
Corporation.
David T. Taylor, Trade
112 (Janice O’Lear, Ma
Before Simms, Chapman
Judges.
Opinion by Bucher, Adm
Cybernet Systems
refusal of the Tradema
NETMAX for “computer s
operating a multi-prot
manuals sold as a unit
Registration has
of the Trademark Act,
applicant’s mark so re
1 Application Serial
1998. The application w
use in commerce since DeTHIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Paper No. 14
DEB
S PATENT AND TRADEMARK OFFICE
________
k Trial and Appeal Board
________
ernet Systems Corporation
________
rial No. 75/476,392
_______
A. Greenberg of Gifford Krass Groh
tkowski, P.C. for Cybernet Systems
mark Examining Attorney, Law Office
naging Attorney).
_______
and Bucher, Administrative Trademark
inistrative Trademark Judge:
Corporation has appealed from the
rk Examining Attorney to register
oftware for use in installing and
ocol computer network and user
,”1 in International Class 9.
been refused pursuant to Section 2(d)
15 U.S.C. 1052(d), on the ground that
sembles the mark NETMAXER for
Number 75/476,392 was filed on April 29,
as based upon an allegation of use and
cember 18, 1996.
Serial No. 75/476,392
- 2 -
“operating system utility computer programs and user guides
sold together as a unit,”2 also in International Class 9,
that, as used on applicant’s identified goods, it is likely
to cause confusion, to cause mistake or to deceive.
The appeal has been fully briefed and at applicant’s
request, an oral hearing was conducted before the Board.
We affirm the refusal of registration.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue 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).
We turn first to a consideration of the similarity or
dissimilarity of the respective marks, in their entireties
as to appearance, sound, connotation and commercial
impression. While the Trademark Examining Attorney
contends that they are “nearly identical,” applicant
disagrees, arguing as follows:
2 Registration No. 2,002,834, issued on September 24, 1996.
Serial No. 75/476,392
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The cited mark is NETMAXER. While the
obvious components of this mark are NET and
MAX, the cited mark is given an “ER” ending
to create the impression that the mark
refers to a noun – the thing that does the
“maximizing.” There being no such accepted
thing as a MAXER, it is clearly coined and
unique. In contrast, the subject
application is for the suggestive
combination of NET and MAX, to create
NETMAX, clearly alluding to the positive
brand quality of “maximizing” rather than to
a noun which is “MAXER.”
The Trademark Examining Attorney counters that
inasmuch as the only difference is applicant’s deletion of
registrant’s -ER suffix, the marks are indeed quite similar
as to their sound, appearance and connotation. Further,
because the average consumer retains only a general
impression of trademarks, these marks have a similar
overall commercial impression.
We find that these two marks – NETMAXER and NETMAX –
look and sound very much alike due to the fact they share
the same first two syllables, NET•MAX. Yet applicant
attempts to draw a fine distinction between the
connotations and commercial impressions of these two marks
based upon applicant’s deletion of registrant’s final
syllable. However, the dividing line between “the thing
that does the ‘maximizing’ ” and “the positive brand quality
of ‘maximizing’ ” will be lost on the average consumer.
Upon encountering these marks, prospective consumers will
Serial No. 75/476,392
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likely not focus on the differing parts of speech, but
rather will come away with a vague sense of “maximizing
one’s network.” Thus, we agree with the position taken by
the Trademark Examining Attorney that the marks are similar
in overall connotation and commercial impression.
As to the strength of the marks, “net” is suggestive
of a computer network. Sometimes “net” refers to a network
that transmits data over large distances, or a Wide Area
Network (WAN), of which the Internet is the largest network
in existence. Other times, “net” refers to a Local Area
Network (LAN), which usually occupies only a single
building or small campus. We agree with applicant that
both “Maxer” and “Max” suggest the word “maximizing.”
Hence, although registrant’s mark may be deemed to be
somewhat suggestive, there is no evidence in the record
that third parties have adopted or used similar terminology
on the same or related goods. Hence, the du Pont factor
regarding the number and nature of similar marks in use on
similar goods also points toward an affirmance herein.
We turn then to a consideration of the similarity or
dissimilarity and nature of the goods as described in the
registration and application. While applicant argues that
the respective goods “are not in any way similar” (brief p.
3), the Trademark Examining Attorney takes the position
Serial No. 75/476,392
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that they are “highly related” items of computer software.
The record contains dictionary definitions of computer
terms, general LEXIS/NEXIS articles discussing computer
software products, as well as printouts from specific Web
sites discussing registrant’s and applicant’s goods.
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 as identified in the
application with the goods 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, National
Association v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987). In comparing and contrasting these
two types of software, we note that both are identified
rather broadly. Accordingly, while applicant contends they
are “not in any way similar” and the Trademark Examining
Attorney finds them “highly related,” we find that
“computer software for use in installing and operating a
multi-protocol computer network” appears on its face to be
related to “operating system utility computer programs.”
Given the divergence of positions between applicant
and the Trademark Examining Attorney, we look more closely
Serial No. 75/476,392
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at the specific nature and function of the respective
computer programs.
According to the record, registrant is a developer and
vendor of systems software (“operating system utility
computer programs”). Its NETMAXER software determines how
data moves from one processor to another within a private
LAN. In late-February 1995, registrant announced:
… a bandwidth optimization product that will
reduce the amount of network traffic between
[Novell’s] NetWare for SAA servers and mainframe
applications. NetMaxer cuts LAN-to-host network
traffic by storing on the client the application
screens and transmitting only the parts of the
screen changed during operation … .
(“LAN WORLD Briefs,” Network World, March 6, 1995, p. 1).
This data stream optimization technology is targeted to
customers having a mainframe computer linked to remote
servers via a LAN. By greatly reducing network traffic,
registrant claims the user gets faster response times,
reduced telecommunications costs and a more efficient use
of one’s hardware.
By way of comparison with registrant’s software,
applicant’s goods are designed for a “multi-protocol”
computer network. While the goods clearly have an
Internet-centric (WAN) focus, their value grows out of the
fact that they are usually deployed in the context of
Serial No. 75/476,392
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multiple processors connected to the customer’s private
LAN.3
However, applicant argues that the Trademark Examining
Attorney has glossed over the sharp contrast in the nature
of these two types of computer software. While the goods
of registrant are operating system utility4 programs,
applicant argues that its goods are specific application
software.5 That would have us thinking of useful things
like word processors, spreadsheets and relational
databases.6 However, applicant’s screen prints, the pages
drawn from the Internet and the NEXIS excerpts all indicate
that applicant’s software is much more like an operating
3 The Trademark Examining Attorney has submitted for the
record a definition of “protocol” as “the agreed-upon format for
transmitting data between two devices.” A “protocol” is very
similar to a human language. Just as many languages exist, many
protocols also exist. This definition page goes on to identify
several standard protocols from which programmers can choose,
such as ATM (Asynchronous Mode Transfer), IPX (Internetwork
Packet eXchange) and the Internet protocol, TCP/IP (Transmission
Control Protocol/Internet Protocol).
http://webopedia.internet.com/TERMS/p/protocol.html. Applicant’s goods
are designed for a “multi-protocol” computer network, namely, a
network connecting devices programmed using different languages
or protocols.
4 Utility: A program that performs a very specific task,
usually related to managing system resources. Operating systems
contain a number of utilities for managing disk drives, printers
and other devices.
http://webopedia.internet.com/TERMS/u/utility.html.
5 Applicant’s brief, at page 2, says: “In contrast [to
registrant’s operating system utility programs], the goods of the
Aplicant are specific application software.” (emphasis in
original).
6 http://webopedia.internet.com/TERMS/u/utility.html.
Serial No. 75/476,392
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system or a collection of specific utilities than applicant
would have us believe.
Specifically, applicant’s “thin server” software
packages run on top of the Linux open-source operating
system. Applicant has created a market for its
proprietary, shrink-wrap software because it conceals some
of the complexities of working with Linux and overcomes
Linux handicaps. The file shows that applicant offers
three separate packages – FileServer, FireWall and
WebServer – or all three rolled into one Professional
version of the software. FileServer lets one share files
and printers and perform backups. FireWall is a firewall
and router package that provides a single point of access
for a customer’s network as well as Web browsing
capabilities. Finally, the WebServer installs a Web, e-
mail and FTP (File Transfer Protocol) server. Applicant
points out that no other software is needed with its thin-
server series as “each NetMAX product installs the included
[Linux] operating system and all supporting software. No
other software is required.”7
Applicant argues that its software “does not ‘manage
computer resources’ in the way an operating system would”
7 http://netmax.com/products/products/html.
Serial No. 75/476,392
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(applicant’s reply brief, p. 2). Yet, as seen above, the
record clearly shows that applicant’s software is an
enhancement that adds ease and convenience to the Linux
operating system software. Applicant’s customers use this
software to turn a PC into a “thin server.” Hence,
applicant is not selling application software (e.g., word
processor, spreadsheet or database). Rather, it is
targeting customers in need of an operating system and
wanting a network that is simple to administer across
multiple platforms (e.g., Windows, Macintosh and Unix).
Next, applicant contends that operating system utility
software and application software move through different
marketing channels. In addition to the fact that we find
it misleading to apply these broad labels to these
respective goods, there is no evidence to support this
conclusion as to separate channels of trade. In the
absence of any express restrictions in the registration
certificate, we must assume that registrant’s goods travel
in all the usual channels of trade for such goods, which in
this case would include at retail, through online resellers
and directly from registrant. In re Elbaum, 211 USPQ 639
(TTAB 1981). Similarly, the record shows that applicant
relies upon retail distribution, through online resellers
and directly from applicant.
Serial No. 75/476,392
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In determining who comprises applicant’s relevant
purchasers, we note that applicant is pursuing a broad
market of users, but especially the small- to medium-sized
businesses that may be looking for inexpensive and
simplified ways to achieve an online presence. While
registrant’s goods are in no way restricted as to class of
purchasers, the excerpt above from Network World suggests
that medium-sized business all the way to the largest of
enterprises would be potential customers for this product.
Accordingly, we have identified a significant slice of the
population – medium-sized businesses having a mainframe
computer, a number of personal computers and other
processors/servers connected to a LAN, who also want simple
Internet access – as comprising an overlapping customer
base for both applicant and registrant.
Furthermore, in considering the du Pont factor
focusing on the conditions under which, and buyers to whom,
sales are made, applicant’s goods do not fit the extremes
of impulse purchases or of highly expensive goods. In any
case, there is certainly no evidence in the file that
business persons falling into this category of information
systems consumers are necessarily sophisticated in the
high-tech field of servers, software and computer
networking.
Serial No. 75/476,392
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In finding a likelihood of confusion herein, we are
clearly not saying that these two items of software are
competitive or have any of the same functionalities.
Furthermore, while the same enterprise may want the touted
benefits of both of these products, we do not know if they
are necessarily compatible with each other on the same
computer system.8 On the other hand, we are convinced that
these two software packages are similar enough that if sold
under these similar trademarks (NETMAXER and NETMAX), for
the medium-sized business person wanting to have an
efficient computer network (LAN) connected to the Internet
(a WAN), the extent of potential confusion is substantial
indeed.
Decision: The refusal to register is affirmed.
8 It is not clear from this record whether or not
registrant’s Novell NetWare-related software could be made
compatible with applicant’s open-source Linux based products on
the same enterprise-wide system, nor is the answer to this
question critical to our decision under the Lanham Act herein.