Logiciels Winradio Software, Inc.

Trademark Trial and Appeal Board

Jan 8, 2009

No. 77088909 (T.T.A.B. Jan. 8, 2009)

Mailed: January 8, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Logiciels Winradio Software, Inc.
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Serial No. 77088909
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Sherry H. Flax of Saul Ewing LLP for Logiciels Winradio
Software, Inc.

Bernice Middleton, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Hairston, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Logiciels Winradio Software, Inc. has appealed from
the trademark examining attorney’s final refusal to
register the mark WINMEDIA (in standard character form) for
“computer software for radio broadcasting” in International
Class 9.1

1 Serial No. 77088909, filed January 23, 2007; alleging a bona
fide intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77088909
2
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, if used in connection with its
identified goods, so resembles the following marks,
previously registered by Microsoft Corporation, as to be
likely to cause confusion or mistake or to deceive:
(1) WINDOWS MEDIA and design, as shown below,

for “computer software specifically designed for
creating, delivering, playing and viewing of
video, graphic, audio, text, computer programs
and other data over global computer and
communication networks;”2

(2) WINDOWS MEDIA (in standard character form)
for “computer programs, namely software for use
in the creation, delivery, playing and viewing of
video, graphic, audio, text, computer programs
and other data over global computer and
communication networks;”3

2 Registration No. 2528008; issued January 8, 2002; Section 8
affidavit accepted, Section 15 affidavit filed. The registration
includes a Section 2(f) claim as to the word WINDOWS, and a
disclaimer of the word MEDIA.
3 Registration No. 2601424, issued July 30, 2002; Section 8
affidavit accepted, Section 15 affidavit filed. The registration
includes a Section 2(f) claim as to the word WINDOWS, and a
disclaimer of the word MEDIA.
Ser No. 77088909
3
(3) WINDOWS MEDIA (in standard character form)
for “computer services, namely operating web
sites on a wide variety of topics which provide
users with video, graphic, audio, text, computer
programs and other data in a specified format;”4
and

(4) PLAYSFORSURE WINDOWS MEDIA and design as
shown below,

for “computer software specifically designed for
creating, delivering, playing and viewing of
video, graphic, audio and music; operating system
software; computer software for controlling the
operation of audio and video devices, namely, for
recording, playback, storing and sorting using
such devices; computer software for processing
digital music files; computer software for
viewing, searching and playing pre-recorded audio
and Internet radio; computer software for
viewing, searching and playing television
broadcasts and pre-recorded video; computers;
computer hardware; computer peripherals; digital
music recorders and players; portable digital
music players; digital audio players; portable
media players; personal digital assistants; hand-
held computers; mobile phones; downloadable
musical sound recordings; sound and audio
recordings featuring music, spoken word, readings
of books, short stories and poetry, news, sports,
commentary, religion, science, educational
lectures, recordings of historical speeches and

4 Registration No. 2635678, issued October 15, 2002; Section 8
affidavit accepted, Section 15 affidavit filed. The registration
includes a Section 2(f) claim as to the word WINDOWS, and a
disclaimer of the word MEDIA.
Ser No. 77088909
4
events, radio broadcasts, television program
soundtracks and motion picture soundtracks, all
stores in a specified data format; motion picture
films concerning drama, action, horror, mystery,
comedy, science fiction, animation, history,
documentaries and current events, all stored in a
specified digital format; and video recordings
concerning art, history, self-improvement,
current events, news, sports, commentary,
religion, science, education, travel, geography,
language arts, leisure, fitness, television
programs, documentaries and current events,
theatrical performances, comedy and musical
performances, all stored in a specified digital
format.”5

Applicant and the examining attorney have filed
briefs.6
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
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

5 Registration No. 3169651, issued November 7, 2006. The
registration includes a disclaimer of the word MEDIA and a
statement that: The mark consists of a blue triangular image
with rounded corners that contains a stylized red, blue, green
and yellow flag, the words “playsforsure” and “WindowsMedia” in
white and a white horizontal line below the center and right
portion of the word “playsforsure.” In addition, the
registration includes a statement that the colors blue, red,
green, yellow and white are claimed as features of the mark.
6 Accompanying applicant’s reply brief is a copy of a third-party
registration (Registration No. 2072747) which was not previously
made of record. Trademark Rule 2.142(d) requires that the record
on appeal should be complete prior to appeal. Therefore, we will
not consider this third-party registration submitted with
applicant’s reply brief.
Ser No. 77088909
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(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).
We consider first the similarities/dissimilarities
between applicant’s goods and the registrant’s goods and
services. It is the examining attorney’s position that
such goods and services are similar because they all relate
to computer software in the audio and music field.
Applicant, on the other hand, argues that its goods
are different from registrant’s goods and services because
its computer software is for the specific purpose of radio
broadcasting, whereas registrant’s goods and services are
in the nature of general operating computer software and
for listening to and recording audio and music.
It is well settled that goods and/or services need not
be identical or even competitive in nature in order to
support a finding of likelihood of confusion. Instead, it
is sufficient that the goods and/or services are related in
some manner and/or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under situations that would
give rise, because of the marks used in connection
Ser No. 77088909
6
therewith, to the mistaken belief that they originate from
or are in some way associated with the same producer or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp.,
199 USPQ 590 (TTAB 1978) and In re International Telephone
& Telegraph Corp., 197 USPQ 910 (TTAB 1978). Moreover, the
question of likelihood of confusion must be determined on
the basis of the goods and/or services as they are set
forth in the involved application and the cited
registration. See, e.g., Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992);
and The Chicago Corp. v. North American Chicago Corp., 20
USPQ2d 1715 (TTAB 1991). Further, where the goods and/or
services in an application or cited registration are
broadly described, such that there are no restrictions as
to trade channels and purchasers, it is presumed that the
identification of goods and/or services encompasses not
only all goods and services of the nature and type
described therein, but that the identified goods and/or
services are provided in all channels of trade which would
be normal therefor, and that they would be purchased by all
potential customers thereof. See, e.g., In re Elbaum, 211
USPQ 639 (TTAB 1981).
In this case, registrant’s computer software and
computer programs are for use in, inter alia, creating and
Ser No. 77088909
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delivering audio over global computer and communication
networks. Similarly, registrant’s computer services
involve operating web sites on topics which provide users
with audio. Insofar as applicant’s goods are concerned,
they are identified as computer software for radio
broadcasting. Radio broadcasting is an audio broadcasting
service. We find that the foregoing computer software,
computer programs, and computer services of registrant are,
at the very least, closely related to the computer software
of applicant inasmuch as these computer goods and services
all involve creating and delivering audio.
Further, we find that the channels of trade and
classes of purchasers for these computer goods and services
of registrant and applicant are the same, or at the very
least, overlapping. Thus, if registrant’s goods and
services and applicant’s goods were to be marketed under
the same or similar marks, confusion or mistake as to the
source or sponsorship thereof would be likely to occur.
We turn, therefore, to a consideration of the
respective marks. Applicant’s mark is WINMEDIA and
registrant’s marks are WINDOWS MEDIA, WINDOWS MEDIA and
design, and PLAYSFORSURE WINDOWS MEDIA and design.
Applicant argues that when considered in their entireties,
its mark is different from each of registrant’s marks.
Ser No. 77088909
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Applicant argues that its mark consists of an arbitrary
coined term, WINMEDIA, which is unlike registrant’s marks
which consist of or include the two terms “WINDOWS” and
“MEDIA.” In addition, applicant argues that purchasers are
likely to perceive its WINMEDIA mark as “winning media,”
whereas registrant’s mark would not be perceived as such.
Further, applicant maintains that it is entitled to
registration of its mark because the USPTO has registered
many other marks which include the term “WIN” for computer
software. In this regard, applicant submitted during
prosecution of its application copies of nine third-party
registrations that include the term “WIN” for computer
software.
The examining attorney argues that applicant’s mark
and registrant’s marks are similar in that they all contain
“WIN” and “MEDIA.” Further, the examining attorney
maintains that in the computer science and technology
fields, the term “win” is often understood as a shortened
form of the word “windows,” which in turn is understood by
the relevant purchasers as a source indicator for computer
goods and services originating from registrant, Microsoft
Corporation. In this regard, the examining attorney
submitted printouts from the “TechEncyclopedia” website
which indicate that “Win” is “[a] short name for Windows,”
Ser No. 77088909
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and “Windows” is a computer operating system developed by
Microsoft Corporation.
With respect to the marks, we must determine whether
applicant’s mark and registrant’s marks, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, the test is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their commercial impression that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
When applicant’s mark WINMEDIA and registrant’s mark
WINDOWS MEDIA are considered in their entireties, giving
Ser No. 77088909
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appropriate weight to the features thereof, we find that
the overall similarities in the marks far outweigh their
differences. WINMEDIA and WINDOWS MEDIA are similar in
pronunciation and appearance. With respect to connotation,
although applicant’s mark WINMEDIA is run together, the two
terms that make up the mark “WIN” and “MEDIA” are readily
apparent. Although applicant argues that purchasers will
view the “WIN” portion of its mark as connoting “winning,”
we are not persuaded by this argument. On the one hand,
applicant did not submit any evidence to support this
argument, while, on the other hand, we note the
uncontroverted evidence submitted by examining attorney
that purchasers will perceive the “WIN” portion of
applicant’s mark as a shortened version of “WINDOWS.”
Thus, the connotation of applicant’s mark WINMEDIA and
registrant’s mark WINDOWS MEDIA is essentially identical.
In addition, we find that when the marks are considered in
their entireties, they engender substantially similar
overall commercial impressions.
Insofar as applicant’s mark WINMEDIA and registrant’s
mark WINDOWS MEDIA and design is concerned, we find that
when these marks are considered in their entireties, giving
appropriate weight to the features thereof, the overall
similarities in the marks far outweigh their differences.
Ser No. 77088909
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As for registrant’s mark WINDOWS MEDIA and design, if a
mark comprises both a word portion and a design, then the
word portion is normally accorded greater weight because it
would be used by purchasers to request the goods or
services. See In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987). That is the situation with registrant’s
WINDOWS MEDIA and design mark. The “multiple windows”
design is a mere background for the word WINDOWS. It is
the word portion WINDOWS MEDIA which can be articulated and
that will make a greater impression on consumers. For the
reasons set forth above, this portion of registrant’s mark
is similar to applicant’s mark WINMEDIA. Thus, although we
have compared the marks in their entireties, we give
greater weight to WINDOWS MEDIA in registrant’s mark, and
find that registrant’s mark and applicant’s mark are
similar in appearance, pronunciation, meaning and
commercial impression.
With respect to applicant’s mark WINMEDIA and
registrant’s mark PLAYSFORSURE WINDOWS MEDIA and design, it
is WINDOWS MEDIA that is the dominant portion of
registrant’s mark. The term “PLAYSFORSURE,” i.e., “plays
for sure,” is laudatory in nature and, therefore, this term
is entitled to less weight when comparing the marks.
Further, the triangular design is entitled to little weight
Ser No. 77088909
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as it is a “carrier” for the word portion of registrant’s
mark. Again, although we have compared the marks in their
entireties, we give greater weight to WINDOWS MEDIA in
registrant’s mark, and find that registrant’s mark and
applicant’s mark are similar in appearance, pronunciation,
meaning and commercial impression.
As indicated, during the course of prosecution,
applicant submitted copies of nine third-party
registrations for marks that contain the term “WIN” for
computer software. These third-party registrations,
however, are entitled to little weight on the question of
likelihood of confusion. See, e.g., In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983). Such
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them and, in
any event, the existence on the register of arguably
similar marks cannot aid an applicant in its effort to
register another mark which so resembles a registered mark
as to be likely to cause confusion. See, e.g., AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268 (CCPA 1973); and Lilly Pulitzer, Inc. v. Lilli Ann
Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967). In this
case, none of the marks in the third-party registrations
(e.g., WINAMP, WINFIX, WINMASTER) are as similar to
Ser No. 77088909
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registrant’s marks as is applicant’s mark. As the
examining attorney points out, none of the registrations
include the terms “WIN” and “MEDIA.”
In sum, we find that applicant’s goods are closely
related to registrant’s goods and services, that the
respective trade channels and classes of purchasers are the
same, or at the very least, overlapping, and that
applicant’s mark and registrant’s marks, viewed in their
entireties, are similar. Thus, we conclude that a
likelihood of confusion exists.
Finally, to the extent that we have any doubt in this
case, we resolve that doubt, as we must, in favor of the
prior registrant. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 1025 (Fed. Cir. 1988); and In re Martin’s Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984).
Decision: The refusal to register under Section 2(d)
is affirmed in view of each of the cited registrations.