Mapcad, Inc.

Trademark Trial and Appeal Board

May 11, 2006

No. 78312371 (T.T.A.B. May. 11, 2006)

Mailed:
11 May 2006
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mapcad, Inc.
________

Serial No. 78312371
_______

Jeffrey Greger of Lowe Hauptman & Berner, LLP for Mapcad,
Inc.

Patty Evanko, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______

Before Drost, Zervas, and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On October 10, 2003, applicant Mapcad, Inc. applied to
register the mark MAPCAD (in typed or standard character
form) on the Principal Register for goods ultimately
identified as “computer software for professionals in the
field of civil engineering excluding software used in
drafting and mapping in the field of photogrammetry” in
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78312371
2
Class 9.1 During the prosecution of the application, the
examining attorney accepted applicant’s amendment of the
application to seek registration on the Principal Register
under the provision of Section 2(f) because its mark had
acquired distinctiveness. The examining attorney ultimately
refused to register applicant’s mark for two reasons.
First, the examining attorney determined that under Section
2(d) of the Trademark Act (15 U.S.C. § 1052(d)),
applicant’s mark was likely to cause confusion, mistake, or
to deceive because of a registration for the mark CADMAP
(typed or standard character drawing) for “computer
software for use in the field of drafting, map drawing and
photogrammetry” in Class 9.2 The examining attorney also
refused to register applicant’s mark because applicant’s
identification of goods did not specify the function of the
software.
When the refusals were made final, applicant filed an
appeal.
We begin by addressing the refusal to register on the
ground that applicant’s identification of goods is not
definite. 37 CFR § 2.32(a)(6). TMEP § 1402.03(b) (2d ed.

1 Serial No. 78312371. The application alleges a date of first
use and a date of first use in commerce of April 1, 1999.
2 Registration No. 1,611,106 issued August 28, 1990, renewed.
Ser No. 78312371
3
rev. April 2005) specifically addresses the identification
of goods that involve computer software.
Any identification of goods for computer programs must
be sufficiently specific to permit determinations with
respect to likelihood of confusion. The purpose of
requiring specificity in identifying computer programs
is to avoid the issuance of unnecessary refusals of
registration under 15 U.S.C. § 1052(d) where the actual
goods of the parties are not related and there is no
conflict in the marketplace. See In re Linkvest S.A.,
24 USPQ2d 1716 (TTAB 1992). Due to the proliferation
of computer programs over recent years and the degree
of specialization that these programs have, broad
specifications such as "computer programs in the field
of medicine" or "computer programs in the field of
education" should not be accepted unless the particular
function of the program in that field is indicated.
For example, "computer programs for use in cancer
diagnosis" or "computer programs for use in teaching
children to read" would be acceptable.
Typically, indicating only the intended users, field,
or industry will not be deemed sufficiently definite to
identify the nature of a computer program. However,
this does not mean that user, field or industry
indications can never be sufficient to specify the
nature of the computer program adequately. For
example, "computer programs in the field of
geographical information systems" would be acceptable.
Geographical information systems, also known in the
industry as GIS, are well-defined computer applications
that do not need further definition.
While applicant “submits that [it] has complied with
the requirement to identify computer software with
specificity in accordance with TMEP § 1402.03(d) by adopting
language as suggested in the TMEP,” (Reply Brief at 2), we
agree with the examining attorney that applicant’s
identification of goods simply identifies its computer
Ser No. 78312371
4
software as being for professionals in the field of civil
engineering. As indicated in the TMEP, this is not
definite. The examining attorney, in her first Office
action, has submitted a definition of civil engineer as “an
engineer whose training or occupation is in the design and
construction especially of public works (as roads or
harbors).” The “Introduction to Civil Engineering” webpage
in the record identifies the subfields of civil engineering
as including environmental engineering; geotechnical
engineering; structural engineering; photogrammetry,
surveying and mapping; water resources engineering;
transportation; and construction management. This evidence
demonstrates that the field of civil engineering is broad
and that use of software in one area of civil engineering
would not necessarily mean that there was confusion with a
similar trademark used on different software used in other
fields of civil engineering. Therefore, we affirm the
examining attorney’s refusal to register on the ground that
applicant’s identification of goods is not acceptable
because it did not specify the function of the software.3

3 In its Reply Brief at 3, applicant proposed an amendment to the
identification of goods to address the examining attorney’s
objection. We deny applicant’s belated request to remand the
application. This request is untimely and it is not clear that
it would overcome the examining attorney’s objection. TBMP
§§ 1205.01 and 1209.04 (2d ed. rev. 2004).
Ser No. 78312371
5
Next, we address the question of likelihood of
confusion and we consider the facts as they relate to the
relevant factors set out in In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). See
also In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973); and Recot, Inc. v. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must 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).
First, we will consider the marks of applicant and
registrant. Applicant’s mark is for the term MAPCAD while
registrant’s mark consists of the term CADMAP. Neither
mark claims any design or stylization as a feature. The
marks also consist of the identical six letters and,
indeed, the identical two terms, CAD and MAP. The only
difference between the marks is that applicant has the term
MAP followed by the term CAD, while registrant reverses the
order.
However, we must point out that these marks are not
composed of arbitrary letters or terms. The term CAD is a
Ser No. 78312371
6
recognized abbreviation for software that stands for
“computer-aided design,” which is the “capability of a
computer to be used for automated industrial, statistical,
biological, etc. design through visual devices.” Sippi,
Computer Dictionary (3d ed. 1984).4 Registrant’s
identification of goods specifies that a feature of the
software is “map drawing.” Applicant’s specimen
demonstrates that its software is the “only product that
provides a complete and standardized means for creating and
managing plans. Creating Final Maps and Plat Maps has
never been easier.” Both applicant’s and registrant’s
identified goods would include software using computer-
aided design to create maps. In her brief, the examining
attorney points out that “applicant correctly notes that in
both marks the term CAD is a generic acronym which refers
to ‘computer assisted design’ or ‘computer assisted
drafting’ and MAP is a common term.” Brief at unnumbered
page 4. In addition, applicant has requested registration
under the provision of Section 2(f), which is an admission
that its mark is not inherently distinctive. Yamaha Int’l
Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001,

4 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser No. 78312371
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1005 (Fed. Cir. 1988) (“Where, as here, an applicant seeks
a registration based on acquired distinctiveness under
Section 2(f), the statute accepts a lack of inherent
distinctiveness as an established fact”).5
Inasmuch as these marks are composed of the identical
terms CAD and MAP in different order, they are not
identical and we must consider how similar the marks are.
Recently, the board noted that the “mere commonality of
“first” and “care” in the parties’ marks (moreover, in the
reverse order) is an insufficient basis on which to find
likelihood of confusion.” CareFirst of Maryland Inc. v.
FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1511
(TTAB 2005). Similarly, the District Court for the Eastern
District of Virginia held that the marks CAREFIRST and
FIRST CARE, while “mirror images of each other,” were not
confusingly similar. CareFirst of Maryland Inc. v. First
Care PC, 350 F. Supp.2d 714, 73 USPQ2d 1833, 1839-40 (E.D.
Va. 2004), aff’d, 434 F.3d 263, 77 USPQ2d 1577 (4th Cir.
2006) (First Care). Cases involving the transposition of
parts of the marks have reached different conclusions based

5 With its appeal brief, applicant submitted numerous
registrations in an attempt to show that MAP and CAD are in
widespread use. The examining attorney has objected to the
submission of this evidence. We agree and sustain the examining
attorney’s objection to this untimely submission of evidence. 37
CFR § 2.142(d).
Ser No. 78312371
8
on the individual facts of the case. Compare First Care
(CAREFIRST and FIRST CARE); In re Best Products Co., Inc.,
231 USPQ 988 (TTAB 1986) (BEST JEWELRY and design and
JEWELERS’ BEST); In re Akzona Incorporated, 219 USPQ 94
(TTAB 1983) (TOUCH O’ SILK and SILKY TOUCH); and In re
Mavest, Inc., 130 USPQ 40 (TTAB 1961) (SQUIRETOWN and TOWN
SQUIRES) (no confusion in these cases) with Carlisle
Chemical Works, Inc. v. Hardman & Holden Limited, 434 F.2d
1403, 168 USPQ 110 (CCPA 1970) (COZIRC and ZIRCO); Bakers
Franchise Corp. v. Royal Crown Cola Co., 404 F.2d 985, 160
USPQ 192 (CCPA 1969) (DIET-RITE and RITE-DIET); In re Wine
Society of America Inc., 12 USPQ2d 1130 (TTAB 1989) (THE
WINE SOCIETY OF AMERICA and AMERICAN WINE SOCIETY); and In
re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988)
(RUST BUSTER and BUST RUST) (likelihood of confusion in
these cases).
In this case, the marks are obviously similar to the
extent that they are composed of the same terms CAD and
MAP. In addition, the similarity of the initial word can
often lead to a conclusion that the marks are similar.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005) (“The presence of this strong distinctive term
as the first word in both parties' marks renders the marks
Ser No. 78312371
9
similar”). This is not the case here. We cannot overlook
the difference in appearance, pronunciation, and commercial
impression created when the terms are combined. More
importantly, the examining attorney has maintained that the
term CAD is generic and the other term, MAP, is common
inasmuch as both applicant’s and registrant’s goods include
software for creating maps using computer-aided design.
Therefore, neither term is particularly strong when used in
association with the identified goods. Regarding the
meaning, their similarity is based on the fact that both
could describe a mapping feature that includes computer-
aided design. Therefore, we find that while the marks are
similar, there are also significant differences.
We next consider the goods of applicant and
registrant. Applicant’s computer software is limited to
software for professionals in the field of civil
engineering excluding software used in drafting and mapping
in the field of photogrammetry. Registrant’s goods are
computer software for use in the field of drafting, map
drawing and photogrammetry. We must consider the goods as
they are described in the identification of goods in the
application and registration. Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
Ser No. 78312371
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the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
We first consider whether the goods overlap because,
if there is no overlap, confusion would be unlikely.
Applicant’s goods are computer software for professionals
in the field of civil engineering excluding software used
in drafting and mapping in the field of photogrammetry.
The identification of goods limits the goods to software
(1) for professionals, (2) in the field of civil
engineering, and (3) not involving drafting and mapping in
the field of photogrammetry.
Photogrammetry involves “measuring or drawing from
photographs: Making measurements or scale drawings from
photographs. Especially using aerial photographs in the
construction of maps.” Final Office Action, Encarta
dictionary attachment.
Digital photogrammetry is the science of obtaining
high precision measurements from photographs and other
forms of imagery. This ranges from aerial photographs
for mapping, through close-range photos for medical
measurements, to the use of digital images in
sophisticated digital work workstations. Digital
Ser No. 78312371
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photogrammetry is revolutionizing the way we think
about and work with maps.

Photogrammetry has evolved from analog to analytical
to digital (softcopy) photogrammetry. The main
difference between digital photogrammetry and its
predecessors – analog and analytical – is that it
deals with digital imagery directly rather than
(analog) photographs. However, the mathematics of
data processing models (e.g., orientation,
triangulation, etc.) used in digital photogrammetry
has been well established.

Photogrammetry has been used for a variety of
applications, ranging from engineering design to
natural resource and environmental inventory to
hydrographic survey to archaeological mapping. Most
topographic maps available today were created using
photogrammetry, which is considered the primary
approach to GIS base data collection and updating.

Final Office Action, Bohannan Huston webpage attachment.

Registrant’s software is for use in the field of
drafting, map drawing and photogrammetry. The examining
attorney argues that inasmuch as “both goods are computer
software for mapping, and the registrant’s software uses
photogrammetry, which is used in civil engineering, the
goods are closely related.” Brief at unnumbered p. 8.
Furthermore, the examining attorney maintains that “the
field of ‘drafting, map drawing and photogrammetry’ can
include computer software for map drawing that utilizes
photogrammetry as well as computer software for map drawing
that does not use photogrammetry.” Id. On the other hand,
applicant argues that “its software is for mapping but …
Ser No. 78312371
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computer mapping software includes a subset of
photogrammetry which Applicant excludes in its application
and for practical purposes Applicant does not compete or
use.” Reply Brief at 5. In addition, applicant maintains
that the examining attorney has “broadened the coverage of
the registered CADMAP mark to include anything related to
mapping or drawing, thereby giving short shrift and
rendering meaningless the term ‘photogrammetry’ as an
alleged third field of use.” Id.
Applicant has also submitted 16 declarations from
people in civil engineering-related professions. A sample
from a declaration is set out below.
The MAPCAD brand product I am familiar with is not
used for photogrammetry. Conversely, CADMAP is used
strictly for photogrammetry… The differences in the
functional use of the respective softwares make it
unlikely that a professional in the field of civil
engineering would believe the two brands are
affiliated.

We are constrained to agree with the examining
attorney that registrant’s identification of goods does not
limit its software to the field of photogrammetry. While
not a model of clarity, the identification sets out three
separate functions and not a single field that would be
known as mapping, drafting, and photogrammetry and require
the presence of all three functions. The declarants’
statements about the registrant’s goods do not address the
Ser No. 78312371
13
goods as they are identified but instead as they are
apparently used. As discussed previously, this is not the
proper test for analyzing likelihood of confusion issues
before the board. Therefore, we must assume that there is
at least some overlap inasmuch as registrant’s goods could
similarly include mapping and drafting software for civil
engineering professionals not in the field of
photogrammetry.
At this point, we address the final significant
factors, which include the sophistication of the purchasers
and the conditions of sale. Applicant argues that its
software is purchased by sophisticated civil engineers
after careful consideration. Brief at 12. Applicant’s 16
declarations include statements to the effect that: “As a
civil engineer I make careful examinations and research the
products I use in connection with my trade when it involves
software programs in the field of computer assisted drawing
which cost in excess of a thousand dollars.” Also, the
examining attorney’s evidence shows that “civil engineers
are involved in the precise measurements of the earth’s
surface to obtain reliable information for locating and
designing engineering projects.” Final Office Action,
Civil Engineering Research Institute webpage. This
evidence supports applicant’s argument that purchasers of
Ser No. 78312371
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the overlapping products, civil engineering professionals,
would be sophisticated purchasers who would carefully
consider software used in their profession especially
software related to obtaining precise measurements. This
factor favors applicant. See Palm Bay Imports, 73 USPQ2d
at 1695 (“Purchaser sophistication may tend to minimize
likelihood of confusion”).
When we consider all the evidence of record, we
conclude that there is no likelihood of confusion. While
the marks contain the same terms, these terms are
admittedly generic or common. They are used in reverse
order and the use of common terms in this order changes
their commercial impression, appearance, and sound. To the
extent their meanings are similar, it would be because both
could have similar descriptive meanings. Furthermore, the
overlap in the goods is limited to civil engineering
professionals. While it is not difficult to assume that
these professionals are sophisticated purchasers who
exercise care in these types of purchases, we have
declarations in the record from 16 professionals that
establish that this is the case. Under these circumstances
when these professionals encounter the marks CADMAP and
MAPCAD for mapping software, they would not assume that
these products come from an associated or related source
Ser No. 78312371
15
simply because they use the generic term CAD and the common
term MAP for mapping and drafting software.6

Decision: The examining attorney’s refusal to
register applicant’s mark because of Registration No.
1,611,106 is reversed. The refusal to register applicant’s
mark because the identification of goods is not definite is
affirmed.

6 While we were able to decide the issue of likelihood of
confusion in this case despite the indefiniteness of applicant’s
identification of goods, we add that the identification remains
indefinite. Future applications may be unnecessarily refused
registration because of the indefiniteness of applicant’s
identification of goods.