Microbook Int’l. , Inc.

Trademark Trial and Appeal Board

Jan 29, 2003

No. 76174284 (T.T.A.B. Jan. 29, 2003)

Mailed: 29 JAN 2003
Paper No. 9
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Microbook International, Inc.
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Serial No. 76/174,284
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David V. Radack, Esq. of Eckert Seamans Cherin & Mellott,
LLC for Microbook International, Inc.
LaVerne T. Thompson, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Microbook International, Inc. (applicant) has filed an
application to register the mark INTELLITEXT READER, in
typed form, for goods ultimately identified as “computer
software which converts raw text into a formatted file for
use in eventual downloading into an electronic display
device” in International Class 9.1
1 Serial No. 76/174,284 filed on December 1, 2000. The
application is based on an allegation of a bona fide intention to
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76/174,284
2
The examining attorney refused to register applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of the registration of the mark INTELLI-
TEXT (in typed form) for “computer software, and printed
instruction manual sold therewith, for use in creating
customized documentation in the field of human resources
management” in International Class 9.2
After the examining attorney made the refusal final,
this appeal followed.3
We affirm.
The examining attorney’s position is that in
applicant’s mark INTELLITEXT READER, the dominant portion
of the mark is the term “Intellitext,” and the dominant
portion of both marks is essentially identical, INTELLITEXT
and INTELLI-TEXT. While applicant’s mark includes the
disclaimed word “Reader,” when the marks are viewed in
their entireties, the examining attorney determined that
use the mark in commerce. In addition, the application has been
amended to disclaim of the word “Reader.”
2 Registration No. 1,960,850 issued March 5, 1996. Affidavits
under Sections 8 and 15 have been accepted or acknowledged.
3 In addition to the refusal under § 2(d), the examining attorney
also made final her requirement that applicant submit additional
information. Applicant has responded that its “product is not
yet being marketed and no advertisements or promotional brochures
are available. As Applicant’s product is very specialized and
unique, there are no competitor examples of Applicant’s product,
either.” Amendment received October 25, 2001, p. 4. In view of
applicant’s response, we reverse the requirement for additional
information.
Ser No. 76/174,284
3
these differences were not enough to avoid the marks being
held to be highly similar in sound, appearance,
connotation, and commercial impression.
As to the similarities of the goods, the examining
attorney observed that both applicant’s and registrant’s
goods are computer software. More importantly, the
examining attorney found that the functions of the goods
are closely related:
The applicant describes the function of its software
as “software which converts raw text into a formatted
file for use in eventual downloading into an
electronic display device.” The registrant[]
describes the function of its software as “for use in
creating customized documentation in the field of
human resources management.” Both functions are
related. The registrant’s software creates customized
documents and does not limit that creation. This
includes the formatting of documents into a customized
format for use in eventual downloading into an
electronic display device, such as the applicant
describes.
Brief at 5-6.
The examining attorney has also submitted excerpts
from publications that indicate that “the same providers of
software that can create documents can use the software to
convert the document to another text.” Brief at 6.
Dictation software, on the other hand, can be used to
create documents, since it interprets what you say and
converts your speech into computer text.
Chattanooga Times, March 14, 2000.
DocID software does require that the documents first
be scanned to create document images and that the
Ser No. 76/174,284
4
images be then converted to the associated text files
via optical character recognition (OCR) processing.
Legal Tech, June 1999.
Trellix 1.0, recently developed by Dan Bricklin, co-
creator of VisiCalc for the Apple II in the early
1980s, lets users create documents in various formats
that are then converted to HTML and imported into
NetObjects TeamFusion.
InfoWorld Daily News, December 8, 1997.
IBM will team up with its Lotus Development Corp.
subsidiary to demonstrate how Lotus Notes’ management,
workflow, document creation, forms, and tabling
capabilities can be used to create documents that are
then converted on the fly—-using InterNotes Publisher-
-into HTML-based Web pages.
PC Week, October 30, 1995.
The Distiller converts PostScript files to PDF.
Exchange creates documents by “printing” them to a
disk file in PDF format.
ASAP, March 1994.
When we finish creating the document, the application
converts it to an ASCII file and deletes the MiniWord
document.
HP Professional, March 1993.
The examining attorney also submitted copies of
several registrations to show that entities have obtained
registrations for software that includes both document
creation and conversion functions. See Registration Nos.
2,520,210; 2,514,087; 2,500,755; and 2,169,419. Because
the examining attorney found that the marks were highly
similar and the goods were related, the examining attorney
refused registration because there was a likelihood of
confusion.
Ser No. 76/174,284
5
Applicant responds by arguing that [p]utting aside
Registrant’s use of a hyphen between ‘INTELLI’ and ”TEXT,’
the Applicant’s mark is different due to the use of the
term ‘READER,’ notwithstanding that the term is descriptive
and has been disclaimed. The term ‘READER’ gives the
Applicant’s mark a different appearance, pronunciation and
meaning.” Br. at 3.
Regarding the goods, applicant first argues that
“likelihood of confusion will not be found, per se, if two
similar marks are both, broadly, used on computer software
products.” Br. at 4 (emphasis omitted). Applicant goes on
to assert that its computer program is used in association
with so-called “E-books,” while registrant’s products is
used by human resource professionals. “Obviously, these
functions are completely unrelated, thus confusion in the
marketplace is unlikely.” Id. (emphasis omitted).
Applicant also maintains that since the goods of both
applicant and registrant are specialized, to the extent
that there may be overlapping purchasers, “this overlap is
so tiny as to be irrelevant.” Br. at 6. Therefore,
applicant submits that the refusal to register under
Section 2(d) should be reversed.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
Ser No. 76/174,284
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set out in In re Majestic Distilling Co., ___ F.3d ___, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ
563, 567 (CCPA 1973). 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 consider whether applicant’s and
registrant’s marks, when compared in their entireties, are
similar in sound, appearance, or meaning such that they
create similar overall commercial impressions. Here,
except for the addition of the descriptive word “reader,”
the marks are virtually the same. While registrant’s mark
contains a hyphen, both applicant’s and registrant’s marks
contain the same word “Intellitext.” The presence or
absence of a hyphen does not change the commercial
impression of the marks. The CCPA held that the addition
of a hyphen and another digit did not eliminate the
similarity of the marks. See Phillips Petroleum Co. v.
C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971)
(“The addition of the extra 6 and the hyphen has already
Ser No. 76/174,284
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been held not to avoid likelihood of confusion, and in the
absence of some other apparent significance for the term 6-
66 we find this conclusion inescapable”).
Furthermore, the addition of the word “reader” does
not change the appearance, pronunciation, meaning, or
commercial impression. In a similar case, the Federal
Circuit held that the addition of the word “Swing” to
registrant’s mark “Laser” did not result in the marks being
dissimilar. “[B]ecause both marks begin with ‘laser,’ they
have consequent similarities in appearance and
pronunciation. Second, the term ‘swing’ is both common and
descriptive… Regarding descriptive terms this court has
noted that the descriptive component of a mark may be given
little weight in reaching a conclusion on likelihood of
confusion.” Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1845-45 (Fed. Cir. 2000) (citations and
quotation marks omitted). See also In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997) (Court held that the addition of “The,” “Cafe” and a
diamond-shaped design to registrant’s DELTA mark still
resulted in a likelihood of confusion); Wella Corp. v.
California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422
(CCPA 1977) (CALIFORNIA CONCEPT and surfer design likely to
be confused with CONCEPT for hair care products).
Ser No. 76/174,284
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Thus, while applicant’s mark contains the word
“Reader,” applicant admits that the word is descriptive
(Br. at 2) and the articles retrieved from the Nexis
database support this admission. See Office action dated
April 24, 2001, Attachments. This disclaimed matter is
unlikely to significantly change the commercial impression
of applicant’s mark and distinguish the mark from
registrant’s. Therefore, we conclude that since the
dominant part of both marks is the common word
“intellitext,” the marks are similar in sound, appearance,
meaning, and commercial impression.
Now we will consider whether applicant’s and
registrant’s software are related. There is no rule that
considers all software to be related. Electronic Data
Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1463
(TTAB 1992) (“All computer software programs process data,
but it does not necessarily follow that all computer
programs are related”).
When we consider the relatedness of the goods, we must
consider the goods as they are identified in the
application and registration. Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
Ser No. 76/174,284
9
descriptions of goods”). See also Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
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”). While
applicant argues that its “computer program is especially
useful when used in association with so-called ‘E-books,”
the identification of goods does not limit the goods in
this way.
Registrant’s software is used to create customized
documentation in the field of human resources management
while applicant’s software converts raw text into a
formatted file for use in eventual downloading into an
electronic display device. The applicant describes the
function of its software as “software which converts raw
text into a formatted file for use in eventual downloading
into an electronic display device.” We agree with the
examining attorney’s argument that registrant’s software
creates customized documents and does not limit that
creation. The format that this software may create the
Ser No. 76/174,284
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documents could include a customized format for use in
eventual downloading into an electronic display device. We
note that “[a]pplicant freely admits that if the
Registration covered that function [converting the
customized document into a downloadable format for
downloading into an electronic display device], Applicant’s
mark would not be registrable.” Br. at 5. The fact that
registrant’s software may not actually have this feature
does not mean that the software as described in the
registration’s identification of goods is not related to
applicant’s software. As the examining attorney’s evidence
shows, computer software that both creates documents and
converts the text is not unusual. Furthermore, there is no
limitation on applicant’s identification of goods that
would exclude its use in the human resources field.
Therefore, purchasers of software for human resources
management to use in creating customized documentation
would likely also include purchasers of software that
converts text into a format for downloading into an
electronic display device. Thus, we conclude that the
purchasers of both registrant’s and applicant’s software
would be similar.
Applicant also argues that registrant’s computer
programs are specialized and expensive. There is no
Ser No. 76/174,284
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evidence that would indicate that registrant’s programs,
priced at $995, are considered expensive for professional
software. Inasmuch as applicant’s software is not limited
to any particular field, there is no reason to find that
applicant’s software would not be found in the same
specialized field as registrant.
Finally, if we had any doubts regarding whether there
is a likelihood of confusion, we resolve them in favor of
the prior registrant and against the newcomer. Kenner
Parker Toys v. Rose Art Industries, 963 F.2d 350, 22 USPQ2d
1453, 1458 (Fed. Cir. 1992).
Decision: The refusal to register on the ground that
applicant’s mark is confusingly similar to the mark in the
cited registration is affirmed.