Electronic Data Systems Corp.

Trademark Trial and Appeal Board

May 31, 2001

No. 75415204 (T.T.A.B. May. 31, 2001)

5/31/01
Paper No. 16
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Electronic Data Systems Corporation
________
Serial No. 75/415,185
Serial No. 75/415,204
_______
L. Joy Griebenow of Electronic Data Systems Corporation for Electronic Data
Systems Corporation.
Dominick J. Salemi, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney)
_______
Before Seeherman, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant has filed two applications for registration
of the mark NETCONNECT, in typed form, for, respectively,
“computer hardware and software integration and migration
services for mainframe systems” [1] and “business consulting
services relating to computer hardware and software
integration and migration for mainframe systems.” [2]
The Trademark Examining Attorney has refused
registration as to each of the applications, on the ground
that applicant’s mark NETCONNECT, as applied to the
services recited in each of the applications, so resembles
the mark NETCONNECT, registered (in typed form) for
“distributorship, retail store and mail order catalog and
technical consulting services in the field of computers,
computer software, computer peripherals, telecommunications
and computer networking,” [3] as to be likely to cause
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
confusion, to cause mistake, or to deceive. Trademark Act
Section 2(d).
When the refusals were made final, applicant filed a
notice of appeal and a request for reconsideration in each
case. After the Trademark Examining Attorney rejected the
requests for reconsideration, the Board consolidated the
two applications for purposes of appeal. Applicant and the
Trademark Examining Attorney filed main appeal briefs, and
applicant filed a reply brief. Applicant did not request
an oral hearing. [4]
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 likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
§2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We find that applicant’s NETCONNECT mark and the
registered mark NETCONNECT are identical in terms of
appearance and sound. We also find that they have the same
connotation and that they create the same or a similar
overall commercial impression. Applicant’s argument to the
contrary, i.e., that NETCONNECT has one meaning as applied
to applicant’s services but another meaning as applied to
registrant’s services, is not persuasive. First, as
discussed below, we find that applicant’s services and
registrant’s services in fact are highly similar and
related. Second, any possible dissimilarity in the
connotation of NETCONNECT as used in connection with the
respective services is too slight and subtle to have any
dispositive effect on our analysis of the overall
commercial impressions created by applicant’s mark and
registrant’s mark. Rather, we find that the overall
commercial impression of the mark NETCONNECT, as used in
connection with applicant’s and registrant’s respective
services, is essentially identical.
We turn next to a comparison of applicant’s and
registrant’s services. [5] It is not necessary that these
respective services be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is sufficient that the 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 in connection
therewith, to a mistaken belief that they originate from or
are in some way associated with the same producer or that
there is an association or connection between the producers
of the respective services. See In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991); In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978). Moreover, the
greater the degree of similarity between the applicant’s
mark and the cited registered mark, the lesser the degree
of similarity between the applicant’s services and the
registrant’s services that is required to support a finding
of likelihood of confusion; where the applicant’s mark is
identical to the registrant’s mark, as it is in this case,
there need be only a viable relationship between the
respective services in order to find that a likelihood of
confusion exists. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687 (Fed. Cir. 1993); In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
On the face of the respective recitations of services,
registrant’s and applicant’s services are highly similar,
if not also legally identical. Registrant’s broadly
defined “technical consulting services in the field of
computers and computer software” essentially encompass
applicant’s “business consulting services relating to
computer hardware and software integration and migration
for mainframe systems.” This overlap is sufficient in
itself to support a finding of likelihood of confusion,
given the identical nature of the marks.
Further evidence of the relationship between applicant’s
and registrant’s recited services is found in applicant’s
explanation and description of the specific nature of its
services (as set forth in the declaration of applicant’s
employee Glenn Wintrich). Applicant asserts that its
computer hardware and software integration and migration
services, and its consulting services offered in connection
therewith, “enable its customers to inter alia, use
graphical interfaces, build Intranets (private computer
networks), have access to the Internet, remotely access
mainframe data and applications, and exploit the
technologies required to engage in electronic commerce….”
(Wintrich Decl., ¶ 4.) These functions and features of
applicant’s services are encompassed within registrant’s
broadly defined “technical consulting services in the field
of … telecommunications and computer networking.”
Likewise, registrant’s consulting services in the field of
“computer software” would encompass those features of
applicant’s services which are based on applicant’s
“expertise in the areas of software programming, including
data formats and the translation of those data formats,
operating systems of computers, programming language of
applications, different microprocessor technology, and
capabilities of software applications.” (Wintrich Decl., ¶
7.)
Applicant argues repeatedly and at great length that
confusion is unlikely in this case because registrant’s
actual goods and services relate to the “physical
infrastructure” of a computer network system, a subject
with which applicant’s services have nothing at all to do.
Applicant likewise argues that its services and
registrant’s actual goods and services travel in different
trade channels and are marketed to different classes of
prospective customers. Applicant bases these contentions
on the 1998 product catalog of AMP (a predecessor of
registrant’s) and on the declaration of its investigator,
Mr. Woods, regarding the activities of certain other of the
apparent previous owners of the cited registration.
However, our likelihood of confusion determination must be
made on the basis of the services as they are set forth in
registrant’s recitation of services, not on the basis of
any extrinsic evidence or argument purporting to establish
the exact nature of registrant’s actual goods or services.
See Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 639 (Fed. Cir. 1987); In re
Continental Graphics Corporation, 52 USPQ2d 1374 (TTAB
1999); In re Elbaum, 211 USPQ 639 (TTAB 1981). For this
reason, applicant’s reliance on such extrinsic evidence,
i.e., on the AMP catalog and on the declaration of Mr.
Woods, is without legal basis. Moreover, this evidence is
factually irrelevant. The catalog is not even registrant’s
catalog; applicant’s reliance on it as evidence of the
nature of registrant’s goods, customers and trade channels,
etc., is wholly misplaced. Likewise, Mr. Woods’
declaration statements regarding his investigation into the
products and services offered by the other previous owners
of the registration are irrelevant.
Accordingly, we find that applicant’s services, as recited
in the application, and registrant’s services, as recited
in the registration, are sufficiently commercially related
that use of the identical mark NETCONNECT in connection
therewith is likely to cause confusion.
Likewise, we reject applicant’s contention that the
parties’ respective services are offered in different trade
channels and to different classes of purchasers. Neither
applicant’s nor registrant’s recitation of services
includes any limitations as to trade channels or classes of
purchasers, and we accordingly must presume that those
services are offered in all normal trade channels for such
services and to all normal classes of purchasers for such
services. In re Elbaum, supra. In view of the overlap and
otherwise close commercial relationship between applicant’s
and registrant’s respective recited services, we find that
applicant’s and registrant’s respective trade channels and
classes of purchasers are similar rather than dissimilar.
Applicant also argues that its services and registrant’s
services are expensive, and that the purchasers of the
respective services are careful, sophisticated purchasers.
However, aside from applicant’s declarant’s conclusory
statement that the respective services are expensive, there
is no evidence in the record, i.e., as to the actual cost
of the respective services, from which we might conclude
that the services are so expensive that confusion would be
unlikely despite the identical nature of the marks and the
closely related nature of the services. Likewise, there is
no evidence from which we might conclude that applicant’s
and registrant’s respective services typically are not
offered by a single source, or that purchasers normally
would not expect the respective services to originate from
a single source. Thus, even if we assume that purchasers
of the respective services are sophisticated in their
respective fields, we cannot conclude that they are so
sophisticated that they would be immune to source confusion
arising from applicant’s use of a mark identical to
registrant’s in connection with services which are closely
related to registrant’s.
Having carefully considered all of the du Pont evidentiary
factors as to which evidence has been made of record, we
conclude that confusion is likely to result from
applicant’s use of its mark in connection with its recited
services. Moreover, if we had any doubt as to that
conclusion (we do not), such doubt would have to be
resolved against applicant. See In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.
_____
[1] Serial No. 75/415,204, filed January 8, 1998. The application is based on use
in commerce under Trademark Act Section 1(a), and alleges September 18,
1997 as the date of first use of the mark anywhere and first use of the mark in
commerce.
[2] Serial No. 75/415,185, filed January 8, 1998. The application is based on use
in commerce under Trademark Act Section 1(a), and alleges September 18,
1997 as the date of first use of the mark anywhere and first use of the mark in
commerce. As originally filed, the services recited in the application were
“business consulting services for mainframe systems.” With its July 21, 1998
notice of appeal and request for reconsideration, applicant requested that the
recitation of services be amended to read as set forth in the text of this opinion.
The Board remanded the application to the Trademark Examining Attorney for
consideration of the request for reconsideration and the proposed amendment.
The Trademark Examining Attorney rejected the request for reconsideration, but
does not appear to have acted on the requested amendment to the recitation of
services. The Board then resumed action on the appeal. Because the
Trademark Examining Attorney did not object to the amended recitation of
services on remand, we deem him to have accepted the amendment, and we
deem the amended recitation of services to be the operative recitation of services
for purposes of this appeal. We note, however, that our decision would be the
same under either the original or the amended recitation of services.
[3] Registration No. 1,615,223, issued September 25, 1990. Affidavits under
Sections 8 and 15 accepted and acknowledged; Section 9 renewal affidavit filed.
[4] The Board suspended the appeal by order dated November 2, 2000, to allow
time for determination of whether a Section 9 renewal affidavit (due September
25, 2000) had been filed in connection with the cited Registration No. 1,615,223.
Subsequently, the Board received a telephone call from applicant’s counsel
notifying the Board that registrant in fact has filed the Section 9 renewal affidavit,
and requesting resumption of the appeal. Review of the Office’s records reveals
that the Section 9 renewal affidavit was filed on February 2, 2001. In view
thereof, and in accordance with applicant’s request, proceedings in this appeal
are resumed.
[5] Again, applicant’s services, as recited in its respective applications, are
“computer hardware and software integration and migration services for
mainframe systems” and “business consulting services relating to computer
hardware and software integration and migration for mainframe systems.”
Registrant’s services, as recited in the registration, are “distributorship, retail
store and mail order catalog and technical consulting services in the field of
computers, computer software, computer peripherals, telecommunications and
computer networking.”