Data Critical Corp.

Trademark Trial and Appeal Board

Feb 27, 2001

No. 75397987 (T.T.A.B. Feb. 27, 2001)

2/27/01
Paper No. 11
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Data Critical Corporation
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Serial No. 75/397,987
_______
Neal R. Kennedy of McAfee & Taft for Data Critical
Corporation.
Esther Belenker, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______
Before Cissel, Hanak and Chapman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On December 1, 1997, applicant filed the above-
identified application to register the mark “LABVIEW” on
the Principal Register for “data receiving, processing,
transmitting and display system, including software
therefore, for use with medical patient monitoring
equipment,” in Class 9. The application was based on
applicant’s assertion that it possessed a bona fide
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/397,987
2
intention to use the mark in commerce in connection with
these goods.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act on the ground that if
applicant’s mark were to be used in connection with the
specified goods, confusion would be likely because the same
mark, “LABVIEW,” is registered1 for “computer programs and
instructional manuals sold as a unit,” in Class 9. She
also found the identification-of-goods clause in the
application to be indefinite, and required amendment of
that clause to be more specific. She suggested that
applicant adopt the following: “computer hardware and
software, for use with medical patient monitoring
equipment, for receiving, processing, transmitting and
displaying of data.”
Applicant responded by amending the application to
adopt the language suggested by the Examining Attorney and
presenting arguments on the issue of likelihood of
confusion. Applicant enclosed a review of registrant’s
software that applicant had obtained from the Internet, and
argued that the review demonstrated that the goods sold by
1 Registration No. 1,426,634, issued on the Principal Register to
National Instruments Corp. on October 27, 1987. A combined
affidavit under Sections 8 and 15 of the Act was accepted and
acknowledged, respectively.
Ser No. 75/397,987
3
registrant under the registered mark are graphical
programming language programs for test and measurement
applications, which are very different from the goods set
forth in the application, computer hardware and software
for use with medical patient-monitoring equipment.
Further, applicant argued that while its goods do include
specific items of hardware and software, its products are
sold only to sophisticated purchasers who are skilled
medical professionals, rather than to the purchasers of
registrant’s software, which is used for testing and
measurement applications.
The Examining Attorney was not persuaded by
applicant’s response. The refusal to register under
Section 2(d) of the Act was made final in the second Office
Action. Applicant timely filed a Notice of Appeal. Both
applicant and the Examining Attorney filed appeal briefs,
but applicant did not request an oral hearing before the
Board.
Based on careful consideration of the record and
arguments before us, we find that the refusal to register
is well taken.
The predecessor to our primary reviewing court listed
the principal factors to be considered in determining
whether confusion is likely in the case of In re E.I. du
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4
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Chief among these factors are the similarity of the
marks as to appearance, sound, meaning and commercial
impression and the similarity of the goods. If the marks
in question are identical, the relationship between the
goods of the applicant and registrant need not be as close
in order to support a finding of likelihood confusion as
would be the case where differences existed between the
marks. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70
(TTAB 1981).
In the case at hand, the marks are identical, so our
attention must be directed to the issue of whether the
goods set forth in the application are related to those
identified in the cited registration in such a way that the
use of the same mark on both would likely lead to
confusion.
The goods need not be identical or directly
competitive to find a likelihood of confusion. They need
only be related in some manner or the conditions
surrounding their marketing be such that they could be
encountered by the same purchasers under circumstances that
could give rise to the mistaken belief that the goods come
from a single source. In re Martin’s Famous Pastry Shoppe,
Inc. 478 F.2d 1565,223 USPQ 1289 (Fed. Cir. 1984); In re
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5
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978). A key point in this regard is that we must
consider the goods only as they are specified in the
application and registration, respectively, without
limitations or restrictions that are not reflected therein.
Toys “R Us, Inc. v. Lamps R Us, 219 USPQ 340 (TTAB 1983).
We must presume that the language used to identify the
goods in the registration encompasses all goods of the type
therein described, that they move in all the normal
channels of trade for such products, and that they are
available to all potential customers of such goods. In re
Elbaum, 211 USPQ 639 (TTAB 1981). Consistent with this
general rule, in the case of In re Linkvest S.A., 24 USPQ2d
1716 (TTAB 1992), we held that where a registrant’s goods
are broadly identified as computer programs without any
limitation as to the kinds of programs or the fields of use
in which they may be employed, we must assume that the
registrant’s goods encompass all computer programs, and
that they travel in the same channels of trade which are
normal for computer programs to all the usual prospective
purchasers of computer programs.
When we employ these principles in our analysis of the
case before us, the likelihood of confusion is quite clear.
Ser No. 75/397,987
6
Applicant’s goods, as identified in the amended
application, are computer hardware and software, for use
with medical patient-monitoring equipment, for receiving,
processing, transmitting and displaying of data. The goods
identified in the cited registration are “computer programs
and instructional manuals sold as a unit.” When we compare
these products as they are identified in the application
and registration, respectively, without adopting
applicant’s argument that registrant’s goods are actually a
very narrow class of products used for limited purposes
which are quite distinct from applicant’s patient-
monitoring hardware and software, we must come to the
conclusion that the broad way in which the registration
identifies the goods of registrant encompasses the products
specified in the application. That is to say, the
registrant’s software must be considered to include the
same type of software as applicant’s software.
In addition, as the Examining Attorney points out, the
other goods identified in the application, namely the
computer hardware for use with medical patient monitoring
equipment, for receiving, processing, transmitting and
displaying data, are obviously closely related to
applicant’s software. They therefore must be considered to
be just as closely related to the software identified in
Ser No. 75/397,987
7
the registration. As applicant argues, its goods are
designed to be sold together and used together. In view of
the fact that we must consider registrant’s software as
appropriate for any of the purposes for which software is
normally employed, we must assume it could be used to to
accomplish the same tasks that applicant’s software
performs.
Applicant’s argument with respect to the
sophistication of the purchasers of its goods is not
persuasive. The fact that purchasers may be sophisticated
or knowledgeable in a particular field does not necessarily
mean that they are sophisticated or knowledgeable in the
field of trademarks or that they are immune from confusion
as to source when related goods are sold under identical
trademarks. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
In summary, confusion would be likely if applicant
were to use the mark it seeks to register in connection
with the computer hardware and software specified in the
application because the same mark has already been
registered for the same goods.
Any doubt as to the existence of a likelihood of
confusion must be resolved in favor of the registrant and
against the applicant, who had a legal duty to select a
mark which is dissimilar to trademarks already in use in
Ser No. 75/397,987
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his field of commerce. In re Hyper Shoppes, (Ohio), Inc.,
837 F.2d 643, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
of the Lanham Act is affirmed.
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