Gravity Systems, Inc.

Trademark Trial and Appeal Board

Dec 23, 2005

No. 78330413 (T.T.A.B. Dec. 23, 2005)

Mailed:
December 23, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gravity Systems, Inc.
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Serial No. 78330413
_______

Erik J. Osterrieder of Schubert Osterrieder & Nickelson
PLLC for Gravity Systems, Inc.

Samuel E. Sharper, Jr., Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
_______

Before Seeherman, Walters and Holtzman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Gravity Systems, Inc. has applied to register the mark
GRAVITY SYSTEMS, with the word SYSTEMS disclaimed, for
services which were subsequently identified as follows:
Computer installation and repair,
excluding film and video editing and
compositing; installation of computer
networks and computer systems,
excluding film and video editing and
compositing; maintenance and repair of
computer networks and computer systems,
excluding film and video editing and
compositing; upgrading of computer
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78330413
2
hardware, excluding film and video
editing and compositing (Class 37); and

Computer consultation, excluding film
and video editing and compositing;
computer consulting services in the
field of design, selection,
implementation and use of computer
hardware and software systems for
others, but excluding film and video
editing and compositing; computer
diagnostic services, excluding film and
video editing, and compositing;
computer services, namely, creating and
maintaining web sites for others,
designing and implementing networks and
web pages for others, managing web
sites for others, and excluding film
and video editing and compositing;
computer site design, excluding film
and video editing and compositing;
computer network design for others, but
excluding film and video editing and
compositing; customization of computer
hardware and software, excluding film
and video editing and compositing;
installation of computer software,
excluding film and video editing and
compositing; integration of computer
systems and networks, excluding film
and video editing and compositing;
technical support services, namely,
troubleshooting of computer hardware
and software problems, but excluding
film and video editing and compositing;
updating of computer software for
others, but excluding film and video
editing and compositing; hosting the
web sites of others on a computer
server for a global computer network,
but excluding film and video editing
and compositing (Class 42).1

1 Application Serial No. 78330413, filed November 19, 2003, and
asserting first use with respect to the services in both classes
on September 22, 1997 and first use in commerce on September 25,
1997. On November 9, 2005, the Board remanded the application to
the Examining Attorney to consider applicant’s proposed amendment
Ser No. 78330413
3

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the mark GRAVITY, previously
registered2 for the following goods, that if used in
connection with applicant’s services it is likely to cause
confusion or mistake or to deceive:
Computer hardware and software for film
and video editing and compositing which
includes special effects, character
generation, paint and animation, audio
editing, audio effects, film and video
project management, and post production
edit list and shot log import, export,
format translation, list manipulation,
new list generation, video to film cut
list translation, cut list manipulation
and export.

When the refusal was made final, applicant appealed.
The appeal has been fully briefed; applicant did not
request an oral hearing.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set

to the identification of services. On December 7, 2005 the
Examining Attorney denied what he characterized as applicant’s
“request for reconsideration.” The Office action included the
statement that “The exclusion of goods from the identification of
goods does not avoid likelihood of confusion.” From this
statement, we infer that the Examining Attorney accepted the
amendment to the identification, and we have therefore treated
the identification as set forth above.
2 Registration No. 2727386, issued June 17, 2003.

Ser No. 78330413
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forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
With respect to the marks, applicant has argued that
they differ in appearance, spelling and pronunciation
because applicant’s mark contains the additional word
SYSTEMS. We are not persuaded by this argument. The word
GRAVITY in applicant’s mark is identical to the cited mark.
Although applicant’s mark also contains the word SYSTEMS,
the presence of this word is not sufficient to distinguish
the marks. The Examining Attorney required a disclaimer of
this word, with which applicant complied, because it is
descriptive of applicant’s services. Because SYSTEMS is
descriptive, it is the word GRAVITY in applicant’s mark
that functions as the stronger source-indicating portion.
It is well established that, for rational reasons, more or
less weight may be given to a particular feature of a mark.
Ser No. 78330413
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See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). Thus, even though we have compared
the marks in their entireties, because the GRAVITY portion
of applicant’s mark deserves greater weight, we find that
the marks are highly similar in appearance and
pronunciation, and virtually identical in connotation and
commercial impression.
Applicant points to registrations for the marks DELTA
and DELTA SYSTEMS by different third parties in an attempt
to show that the Office has considered the presence of the
word SYSTEMS in a mark to sufficiently distinguish it from
other marks that are otherwise identical. However, the
issue of likelihood of confusion is determined by
considering a number of factors other than the similarities
in the marks themselves, most notably, the relatedness of
the goods. Thus, we cannot conclude from these
registrations that the Examining Attorneys involved
believed that the presence or absence of the word SYSTEMS
was sufficient to avoid a likelihood of confusion. In any
event, it is a well-settled principle that this Board is
not bound by the USPTO’s allowance of prior registrations,
even if they were to have some characteristics similar to
the situation before us here. See In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Ser No. 78330413
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As noted above, in addition to the similarity of the
marks, the relatedness of the goods and services is a
critical factor in the determination of the issue of
likelihood of confusion. In support of his position that
applicant’s identified services and the registrant’s goods
are related, the Examining Attorney has made of record 43
third-party registrations. Third-party registrations which
individually cover a number of different items and which
are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
We must, at this point, make a comment about the
Examining Attorney’s submissions. As a general rule, it is
not necessary to submit such a large number of third-party
registrations in order to make a showing that particular
goods and/or services are related. In this case, it
appears that the Examining Attorney did not even cull
through the registrations in order to find those which are
particularly persuasive. For example, as Trostel clearly
states, to have probative value the registrations must be
used in commerce. However, eleven of the registrations
submitted by the Examining Attorney were based on foreign
registrations, and bear no indication of use in commerce.
Ser No. 78330413
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Nor has the Examining Attorney identified which
registrations cover the same goods as those in the cited
registration. Instead, the Examining Attorney has simply
made the general statement that these printouts “showed
third-party registrations of marks used in connection with
the same or similar goods and services as those of
applicant and registrant in this case,” brief, p. 4, and
that they show marks “used in connection with the same or
similar goods and services as those of applicant and
registrant in this case.” Brief, p. 11. However, the
goods in the cited registration are specialized computer
hardware and software:
Computer hardware and software for film
and video editing and compositing which
includes special effects, character
generation, paint and animation, audio
editing, audio effects, film and video
project management, and post production
edit list and shot log import, export,
format translation, list manipulation,
new list generation, video to film cut
list translation, cut list manipulation
and export.

After thoroughly reviewing the goods and services in
the 32 registrations which were based on use in commerce,
we have been able to identify only a single third-party
registration that might possibly be said to include
computer software for film and video editing and
compositing. (We say “possibly” because no reference to
Ser No. 78330413
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editing or compositing actually appears in the
identification.) The identification of Registration No.
2803016 includes “computer software to enhance the audio-
visual capabilities of multimedia applications, namely, for
the integration of text, audio, graphics, still images and
moving pictures.” This registration also includes, inter
alia, “computer software consultation; computer software
design for others, consulting services in the field of
design, selection, implementation and use of computer
hardware and software systems for others.”
This single third-party registration which arguably
includes the goods and services that are covered by the
cited registration and applicant’s application is not
sufficient to demonstrate that such goods and services are
normally offered by companies under a single mark. On the
contrary, the fact that the Examining Attorney was able to
find only one such third-party registration despite the
extensive search he apparently undertook (judging from the
number of registrations he submitted) indicates that such
goods and services normally are not offered by companies
under a single mark.
Moreover, applicant has amended its identification of
services to specifically exclude services relating to “film
and video editing and compositing,” which are the subject
Ser No. 78330413
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matter of the computer hardware and software of the cited
registration. In view thereof, it is not readily apparent
how, as the Examining Attorney states, the trade channels
for the respective services and goods would be the same.
Even if we accept that companies that purchase computer
hardware and software for video editing and compositing
would also purchase the more general computer installation,
repair and consultation services offered by applicant, such
companies must be considered sophisticated purchasers.
Because such purchasers will know their industry, and
because there is no evidence that sellers of specialized
hardware and software for video editing and compositing
also offer general computer installation, repair and
consultation services, these purchasers are not likely to
assume that such goods and services emanate from a single
source, even if they are offered under similar marks.
In summary, we find that Office has failed to prove
that applicant’s services are related to the goods
identified in the cited registration and we therefore find
that, despite the similarity of the marks, the Office has
failed to prove that confusion is likely.
Decision: The refusal of registration is reversed.