Everex Systems, Inc.

Trademark Trial and Appeal Board

Sep 18, 2000

No. 75478598 (T.T.A.B. Sep. 18, 2000)

Paper No. 9
DEB
9/18/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Everex Systems, Inc.
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Serial No. 75/478,598
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Joseph L. Strabala for Everex Systems, Inc.
Rodney Dickinson, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______
Before Hairston, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Everex Systems, Inc., seeks registration of the mark
“FREESTYLE” for goods identified in the application as
“computers, namely portable and hand held computers,” in
International Class 9.1
The Trademark Examining Attorney has refused registration
under Trademark Act Section 2(d), 15 U.S.C. §1052(d), citing a
registration for the mark “FREESTYLE” as shown below, for
goods identified as “computer software for recognition of

1 Serial No. 75/478,598, filed May 4, 1998. The application is
based upon use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a), with January 1998 alleged as the date of first use
of the mark anywhere and January 1998 alleged as the date of first
use of the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/478,598
2
handwritten characters and images of characters,” in
International Class 9,2 as a bar to registration of applicant’s
mark.
The refusal to register was made final on the ground that
applicant's mark, when applied to its goods, so resembles the
registered mark as to be likely to cause confusion, to cause
mistake, or to deceive.
In the course of rendering this decision, we have
followed the guidance of In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973). This
case sets forth the factors which, if relevant, must be
considered in determining likelihood of confusion.
As to the marks, the Trademark Examining Attorney finds
them to be substantially identical, and applicant does not
dispute this conclusion.
Turning to the goods, the Trademark Examining Attorney
contends that based upon evidence extracted from the
LEXIS/NEXIS® database, “… handwriting recognition software
[registrant’s goods] is repeatedly referred to as an important

2 Reg. No. 2,084,691 issued on July 29, 1997 to ParaGraph
International, maturing from intent-to-use application Ser. No.
74/733,939, filed on September 25, 1995. The registration sets
forth dates of first use in 1995.
Serial No. 75/478,598
3
feature of hand held computers [applicant’s goods herein].”
This conclusion is consistent with applicant’s own specimens
of record, flows from registrant’s specimens (as submitted by
applicant herein), and indeed, with good reason, is not
vigorously contested by applicant.
However, applicant has argued throughout the prosecution
of this application, that based upon its ownership of an
incontestible registration of the mark “FREESTYLE” for
“computer programs and instruction manuals sold as a unit for
graphic arts and paint,” also in International Class 9,3 that
the real issues herein should be stated as follows:
1. Who is the prior registrant in International
Class 9 under the undisputed facts with respect
to a Section 2(d) analysis -- Applicant, owner
of Registration No. 1,643,424 (sic) for
FREESTYLE, or owner of Registration 2,084,469
for FREESTYLE?
2. Is it proper to reject the application of the
owner of the prior, incontestible, registration
for the mark FREESTYLE on a junior registration
for the same mark in the same International
Class (here class 9), when owner of the
earliest registration (senior registrant)
expands the use of FREESTYLE from computer
software to computers where the junior
registraion covers only software?
Applicant argues that it is perverse to refuse
registration herein when applicant already owns a registration

3 Registration No. 1,631,424, issued on January 15, 1991, based
upon application Ser. No. 74/032,749, filed on February 24, 1990,
claiming dates of first use of March 16, 1988.
Serial No. 75/478,598
4
for the identical mark for similar goods – namely, for
computer programs and instruction manuals sold as a unit for
graphic arts and paint. While we are not unsympathetic to the
notion of basic equity raised by applicant herein, priority is
not an issue in the context of an ex parte appeal. Having
chosen to co-exist with the use and registration of the cited
“FreeStyle” mark on handwriting recognition software,
applicant cannot now, in this ex parte case, bring a
collateral attack upon the validity of the cited registration.
Rather, the sole question facing this panel herein is whether
there is a likelihood of confusion when the same mark is used
for registrant’s handwriting recognition software and for
applicant’s hand held computers. On the question of the
relatedness of these goods, we are firmly convinced that these
goods are closely related in that they are complementary, and
that they move in the same channels of trade to ordinary
purchasers.
Accordingly, having acknowledged that applicant has a
right to exclude others from use of its mark on software for
graphic arts and paint, we find that when applicant’s pre-
existing rights are balanced against the other du Pont factors
herein, the scales remain tipped in favor of affirming the
instant refusal. See In re Sunmarks, Inc. 32 USPQ2d 1470 (TAB
1994) [each application must be separately examined, even if
Serial No. 75/478,598
5
applicant owns prior registrations for the identical mark for
goods closely related to those in the application].4 As
contrasted with the facts in Sunmarks, where the Board found
an overlap in goods between the application and applicant’s
earlier registration, here there is no overlap at all between
the goods in the application and the earlier registration.
We find the reasoning of the Board in Sunmarks to be most
applicable in the current case:
This Office should not be barred from examining
the registrability of a mark when an applicant
seeks to register it for additional goods as it
does here, even when the additional goods are
closely related to those listed in a prior
registration. As the Board stated in In re
BankAmerica Corp., 231 USPQ 873, 876 (TTAB
1986):
The cases are legion holding that each
application for registration of a mark for
particular goods or services must be
separately evaluated. See, for example,
In re Loew's Theatres, Inc., 769 F.2d 764,
226 USPQ 865, 869 (Fed. Cir. 1985) [other
citations omitted]. Section 20 of the
Trademark Act, 15 USC Section 1070, gives
the Board the authority and duty to decide
an appeal from an adverse final decision
of the Examining Attorney. This duty may
not be delegated by adoption of
conclusions reached by Examining Attorneys
on different records.

4 See also Prof. J. Thomas McCarthy, 3 MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION, §23.78, pp. 23-165 - 23-166, fn.7 (which also cites
to Sunmarks, 4th ed., 1998.
Serial No. 75/478,598
6
Suffice it to say that each case must be
decided on its own merits based on the
evidence of record. We obviously are not
privy to the record in the files of the
registered marks and, in any event, the
issuance of a registration(s) by an
Examining Attorney cannot control the
result of another case.
We conclude that consumers familiar with registrant's
computer software for recognition of handwritten characters
and images of characters sold under its “FreeStyle” mark would
be likely to believe, upon encountering applicant's mark
“FREESTYLE” for computers, namely portable and hand held
computers, that the goods originated with or were associated
with or sponsored by the same entity.
Decision: The refusal under Section 2(d) is affirmed.
P. T. Hairston
D. E. Bucher
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial and
Appeal Board